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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zenni Optical, LLC. An Oregon LLC v. DNS Administrator / Cykon Technology Limited

Case No. D2009-1594

1. The Parties

The Complainant is Zenni Optical, LLC. An Oregon LLC of California, United States of America, represented by Law Offices of Green & Green of United States of America.

The Respondent is DNS Administrator / Cykon Technology Limited of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <zenni.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2009. On November 26, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On November 27, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which slightly differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 2, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2009. The Response due date was subsequently extended until January 4, 2010. The Response was filed with the Center on January 4, 2010.

The Center appointed James A. Barker as the sole panelist in this matter on January 9, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On January 10, 2010, the Complainant sought leave to file a supplemental submission in relation to its rights in a trademark. On January 13, 2010, the Panel issued a limited order allowing the Complainant to file a supplemental submission on that issue by January 18, 2010, and allowing the Respondent an opportunity to reply by January 21, 2010. Both parties filed supplemental submissions before those dates respectively. By that Panel Order, the Panel also extended the due date for the decision until January 25, 2010.

The Complainant sent a further email to the Center on January 21, 2010, requesting leave to file further supplemental information. By email that same day, the Respondent objected to the filing of further information by the Complainant. On January 27, 2009, the Panel issued a further order, denying the Complainant`s request to file further supplemental information, and further extending the due date for decision until January 29, 2010.

4. Factual Background

The disputed domain name was registered on May 1, 2002.

The Complainant`s ZENNI mark was registered in February 2008. Its ZENNI OPTICAL mark was registered in March 2009.

5. Parties` Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical to its registered mark for ZENNI. In relation to whether the disputed domain name was registered before the first use of the ZENNI mark by the Complainant in commerce, the Complainant claims that its mark was used in "experimental" ways before the launch of the

"www. zennioptical.com" website and so "zenni" was a searchable term. The Complainant sent a "cease and desist" letter to the Respondent and made requests via an agent on August 18, 2009 to buy the disputed domain name which were not successful. The Respondent is only using the disputed domain name to link to a website which is stated to be "under construction".

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name, and is not using it for any purpose. The Complainant says that the Respondent`s business is to hold and sell domain names for websites which it may or may not develop. The Complainant says that the Respondent`s intention is to commercially gain by misleadingly diverting consumers.

The Complainant says that the Respondent has registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) and (ii) of the Policy, which the Complainant says is supported by evidence of the Respondent`s failure to sell the disputed domain name to the Complainant.

B. Respondent

The Respondent says that the word "zenni" was independently invented by it. The Respondent notes that the disputed domain name was registered over three years before the Complainant registered its marks. The Respondent also notes that the Complainant`s claimed first use in commerce of those marks is September 2002, which is also subsequent to the Respondent`s registration of the disputed domain name. In any case, the Respondent points out that those marks are registered to an individual – not the Complainant.

The Respondent says that the Complainant has not made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent also provides screen shots from the Internet archive "WayBack Machine" to show that it had used the disputed domain name in connection with a website under the title "Zenni Magic World". That site was later marked as being "under construction" because the Respondent was configuring the web server for a new website. The Respondent was not interested in the Complainant`s offers to purchase the disputed domain name, and claims that the Complainant has acted in bad faith.

For somewhat similar reasons, the Respondent denies that it has registered and used the disputed domain name in bad faith.

The Respondent requests a finding of reverse domain name hijacking against the Complainant.

C. Supplemental filings

In response to the Panel Order referred to above, the Complainant filed supplementary evidence on January 16, 2010. The Complainant provided evidence of a trademark license agreement, granting it exclusive rights of use for the marks ZENNI and ZENNI OPTICAL from the claimed date of first use of those marks in September 2002. The agreement is signed in the name of the mark owner and, although it is "dated as of September 30, 2002", the agreement refers to the later dates of registration of the marks in 2008 and 2009. The Complainant also amended the Complaint to state that the mark owner is also "the main owner of the Complainant".

In response to that filing, the Respondent states that the Complainant has not provided any evidence to prove that the Complainant is owned by the licensor of the marks. The Respondent also points out that the license agreement submitted by the Complainant is not a contemporaneous document and therefore should not be relied on to show that the Complainant was ever licensed to use the marks. The Respondent submits that the license agreement is only a recent fabrication. Among other things, the Respondent points out that the Complainant was only registered on May 17, 2007 and therefore did not exist at the time of signing the alleged license agreement. The Respondent also says that, since the marks were only registered in 2008 and 2009, the alleged licensor had no right to grant any exclusive rights to those marks.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These elements are cumulative and, as such, if the Complainant fails to prove any one of them it cannot succeed. These elements are discussed below, together with the Respondent`s request for a finding of reverse domain name hijacking against the Complainant.

A. Identical or Confusingly Similar

The first question that arises is whether the Complainant has rights in a mark for the purpose of paragraph 4(a)(i) of the Policy.

The Complainant provides evidence of marks for ZENNI and ZENNI OPTICAL registered in 2008 and 2009 respectively, registered in the name of a Mr. Tibor Laczay. The Complainant also provides a copy of a trademark license agreement in its favor from that individual. The Complainant makes no argument, and consequently provides no evidence, that it has any unregistered trademark rights.

There are obvious weaknesses in this evidence, as pointed out by the Respondent. As noted above for example, the license agreement is purportedly signed and dated in September 2002. At the same time, the agreement refers to the marks registered in 2008 and 2009. From this alone, it is self-evident that the agreement cannot, in fact, have been made in September 2002 but that, at the earliest, it must have been made after the registration of the second trademark in March 2009. The agreement could conceivably have been made any time up until the Complainant`s supplemental submission. Neither the Complainant nor the terms of the license agreement indicate when it was made. As such, it is not possible for the Panel to rule out the possibility that it was made after the filing of the Complaint. Importantly in this respect, to establish its case under paragraph 4(a)(i) of the Policy, the terms of the Policy make it clear that a Complainant must relevantly have rights at least at the date of the filing of the Complaint. A Complainant could not otherwise properly assert, when it filed the Complaint, that a domain name is identical or confusingly similar to a mark in which it has rights.

In part because of these weaknesses in the Complainant`s evidence, the Respondent claims that the license agreement is a "recent fabrication". In other words, the Respondent invites the Panel to make a finding that the license agreement is a fraud. The Panel is unwilling to draw such a conclusion only because of unexplained aspects of the Complainant`s evidence, for which possibly legitimate explanations might be made. While the date of September 2002 appears below the signature from the licensor in the agreement, it might be that this is meant to signify the retrospective date the Complainant claims it to have effect (consistent with the last, unnumbered, clause of the agreement concerning its date of effect).

As such, and while noting the other weakness in the Complainant`s evidence of its trademark rights, the Panel is prepared, for the purpose of this proceeding, to accept that the license agreement is what it says. Despite the unanswered questions it raises, the Complainant`s evidence at least suggests that there was some sort of agreement to license the marks between the trademark owner and the Complainant. Whether the Respondent`s registration pre-dates the Complainant`s trademark rights is relevant to the third ground of the Policy. This is made clear by the discussion of previous panels, addressed in item 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, cited below.

Accepting that the Complainant therefore has rights in a mark, it is self-evident that the disputed domain name is relevantly identical to, at least, the Complainant`s ZENNI mark. (Having made that finding, it is unnecessary to consider whether the disputed domain name is also confusingly similar to the Complainant`s ZENNI OPTICAL mark.)

For these reasons, the Panel finds that the Complainant has established this first element.

B. Rights or Legitimate Interests

Because of the Panel`s findings in relation to the issue of bad faith, it is strictly unnecessary to make a finding on this second element. However, the Panel has briefly addressed this ground as it is relevant to the Respondent`s request for a finding of reverse domain name hijacking.

The Complainant`s case in relation to this element is essentially that the Respondent has made no use of the disputed domain name, has no relevant trademark rights, has refused to sell it to the Complainant, and intends to misleadingly divert Internet users. The Respondent provides some evidence to rebut at least the first of these claims (screenshots of claimed past use of the disputed domain name in connection with a website concerning magic tricks). In any case, the first three of these claims, even if they were established, are not themselves sufficient for a finding that the Respondent lacks rights or legitimate interests.

In relation to the claim that the Respondent is seeking to misleadingly divert consumers, the Complainant provides little evidence. The Complainant provides, for example, no evidence of its own reputation or business, from which an inference might be drawn that the Respondent was aware of it and intended to exploit that reputation. In addition to this, and for the further reasons discussed below in relation to bad faith, there is little evidence to suggest that the Respondent should have been aware of the Complainant`s rights (such as they were) when the disputed domain name was registered in 2002.

It is true that the Respondent does not present substantial evidence of its own use of the disputed domain name. Why, for example, the Respondent chose the apparently arbitrary term "zenni" in connection with its "Zenni Magic World" website is not explained. Nevertheless, the ultimate burden is on the Complainant to prove its case and the Respondent`s claim is plausible. A finding otherwise is not supported by evidence or argument advanced in the Complaint.

Accordingly, the Panel finds that the Complainant has not established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is in relation to demonstrating bad faith that the Complainant`s case falls very short of the mark.

Primarily, this is because of the obvious fact that the Complainant has demonstrated no trademark rights when the disputed domain name was registered in May 2002. The trademarks, for which the Complainant claims to be the exclusive licensee, were only registered in 2008 and 2009. Where a complainant has no trademark rights when a disputed domain name is registered, the consensus view of WIPO Panelists (with narrow exceptions) is that there can be no bad faith "because the registrant could not have contemplated the complainant`s non-existent right" (see paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

The narrow exception to this approach is that bad faith might be found: "…when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights…". (See paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) But the disputed domain name was registered around 6 years before the registration of the first of the Complainant`s marks.

Even the Complainant`s claimed date of first use of its mark in commerce (September 2002) postdates the registration of the disputed domain name in May 2002. Regardless, the Complainant`s claim of first use in its trademark registration does not establish an evidentiary presumption to that effect. See e.g. Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333 citing McCarthy on Trademarks and Unfair Competition В§ 20:28 (4th ed.). In addition, the Complainant provides no evidence that the marks had actually been used in commerce from that date.

Partly anticipating the obvious weakness in its argument because of the date of its trademark registrations, the Complainant vaguely argues that its mark was used in "experimental" ways before the launch of the "www.zennioptical.com" website and so "zenni" was a searchable term. But the Complainant gives no evidence of when its "www.zennioptical.com" website was launched (the evidence of that website in the Complaint is dated in 2009). Neither does the Complainant explain or provide evidence for any other aspects of this claim, nor suggest how it might demonstrate that the Complainant (or its licensor) had rights in a mark of which the Respondent might have been aware.

It follows that the Panel finds that the Complainant has not established its case in relation to paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent asks for a finding of reverse domain name hijacking against the Complainant. "Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent`s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy." See Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

The Complainant should have known its case was fatally weak. The Complainant is represented by counsel. The Complaint as first filed provided no evidence, beyond a mere assertion, of the Complainant`s trademark rights. The Complainant`s evidence of its claimed trademark license was provided only in response to the Panel Order, but even then leaves significant questions unanswered. While the Panel has given the Complainant the benefit of the doubt on this first element, it was a doubt created by the Complainant itself, and it can hardly be said that the Complainant`s trademark rights were clearly demonstrated. The significantly prior registration of the disputed domain name, in comparison to the Complainant`s trademark registrations, might have called for evidence of alternatively common law trademark rights. However, the Complainant provided no such argument or evidence. The arguments and evidence advanced by the Complainant instead fall well short of those required to establish a colorable case under paragraph 4(a) of the Policy.

For these reasons, the Panel makes a finding of reverse domain name hijacking against the Complainant.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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James A. Barker
Sole Panelist

Dated: January 29, 2010