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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Eye Care Centers of America, Inc. v David Baron
Claim Number: FA0104000097074
PARTIES
The Complainant is Eye Care Centers of America, Inc., San Antonio, TX, USA ("Complainant") represented by Pamela B. Huff, of Cox & Smith Incorporate. The Respondent is David Baron, Carrollton, TX, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "eyemasters.com" registered with Secura GmbH.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A.. Dorf, (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 16, 2001; the Forum received a hard copy of the Complaint on April 17, 2001.
On April 17, 2001, Secura GmbH confirmed by e-mail to the Forum that the domain name "eyemasters.com" is registered with Secura GmbH and that the Respondent is the current registrant of the name. Secura GmbH has verified that Respondent is bound by the Secura GmbH registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 7, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@eyemasters.com by e-mail.
A timely response was received and determined to be complete on April 19, 2001.
On April 25, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the domain name at issue; and that the Respondent Registered the domain name in bad faith.
B. Respondent
The Respondent contends that the domain name at issue is not identical or confusingly similar to Complainant’s trademark or service mark as it is a non-distinctive, descriptive phrase; that the Respondent enjoys a legitimate interest in the domain name as its business plan is dependent on domain names of common and descriptive words; and that it did not register the domain name in bad faith.
FINDINGS
The Complainant is engaged in the business of providing optical services, opticians services, and eyeglasses and contact lenses. The Complainant first registered its trademark with the United States Patent and Trademark Office in May, 1984, having first used this mark in commerce in April, 1982.
The Respondent states that its business model is to provide web-based Internet e-mail services to users, and said plan is dependent on domain names of common and descriptive English words and phrases, and that registering descriptive domain names is an essential component of its business plans.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Respondent has registered the domain name at issue reflecting Complainant’s mark in its entirety with the addition of the ".com" extension. It would not be unreasonable for an Internet user looking for the Complainant’s website to enter the domain name "eyemasters.com" and expect to find said website. The Respondent does not contest that the Complainant owns rights in various trademarks that include the phrase "eyemasters" for certain categories. See Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name "facup.com" is clearly identical to the FA CUP trademark belonging to Complainant); Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) ".com" after the name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
Rights or Legitimate Interests
The Respondent is not using the domain name in connection with a bona fide offering of goods or services, the Respondent has not been commonly known by the domain name; and the Respondent is not using the domain name in connection with a non-commercial purpose. See Sears, Roebuck and Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000) (finding that the Respondent has no rights in the domain name because (1) the Respondent did not use the domain name in connection with a bona fide offering of goods and services, (2) the Respondent was not commonly known by the mark, and (3) the Respondent was not using the domain name in connection with a noncommercial purpose).
Registration and Use in Bad Faith
From the evidence presented by the Complainant, it appears that the domain name has been placed for sale on a site known as "Ubid.com" and the Respondent admits that registering descriptive domain names is an essential component of its business plan. From evidence presented by the Respondent, it appears that it conducts no trademark/service mark searches, but only relies on domain name availability. Also, it appears from the evidence presented that the Respondent is not engaged in the eye care business. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith").
DECISION
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "EYEMASTERS.COM" be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf, (Ret.) Panelist
Dated: May 9, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/916.html