WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vision Service Plan d/b/a VSP Corporation and Eyefinity, Inc. v. Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818

Case No. D2019-2497

1. The Parties

The Complainants are Vision Service Plan d/b/a VSP Corporation, United States of America (“United States” or “U.S.”) and Eyefinity, Inc., United States, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818, United States.

2. The Domain Name and Registrar

The disputed domain name <eyefinty.com> (“Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 2019, 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 October 14, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019.

The Center appointed Martin Schwimmer as the sole panelist in this matter on November 21, 2019. 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.

4. Factual Background

The Complainant Vision Service Plan d/b/a VSP Corporation, through its business Eyefinity, Inc., owns and uses the trademark EYEFINITY in connection with various products and services relating to eye health and eye care, including eye care insurance processing services, optometry practice management services, as well as the sale of eye wear. The trademark registrations are held in the name of Eyefinity, Inc. and business is conducted utilizing “Eyefinity” as a trading name. VSP Corporation and Eyefinity, Inc. will be referred to herein collectively as the Complainant.

The Complainant began use of the EYEFINITY trademark in 2000, initially in connection with insurance claim processing, and received its first registration for the mark in 2002. The Complainant utilizes the domain name <eyefinity.com>.

The Domain Name was registered in 2004. The Domain Name re-directs to websites that offer what is purported to be malware.

5. Parties’ Contentions

A. Complainant

The Complainant owns 11 trademark registrations in the U.S., Canada, and the European Union, which registrations consist of or contain the EYEFINITY mark, including United State registration number 2,559,899 for EYEFINITY, in connection with “electronic processing of insurance claims and payment data.” The mark was first used in commerce on April 18, 2000, and was registered on April 9, 2002.

The Complainant VSP Corporation identifies the Complainant Eyefinity, Inc. as its business. The trademark registrations are held in the name of Eyefinity, Inc. and business is conducted utilizing “Eyefinity” as a trading name. As VSP Corporation is the beneficial owner of its Eyefinity Inc. business’s trademark, the two entities share a common grievance in regard to the Domain Name.

The Complainant maintains a website at <eyefinity.com>.

The Domain Name contains the EYEFINITY trademark in its entirety, but for the elimination of the second letter “i”. The Domain Name is thus an intentional misspelling of the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register the trademark in any manner.

The use of the Domain Name to offer what has been described as a browser hijacker, is not a bona fide offering of goods or services.

Respondent has never been commonly known by the Domain Name, and cannot establish rights or legitimate interests.

The Domain Name was registered four years after the trademark was first used, and two years after the first registration obtained by the Complainant.

Use of the Domain Name to distribute malware, as well as the use of an intentional misspelling of the Complainant’s trademark, is evidence of bad faith use and registration of the Domain Name.

This Respondent has engaged in a pattern of cybersquatting, as it is the respondent in nine prior proceedings under the Policy this year.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations for the EYEFINITY mark. Examples of its use of the mark can be viewed at <eyefinity.com>.
The string “eyefinty” in the second-level of the Domain Name does not have a materially different visual impression from that of the Complainant’s mark. Neither “eyefinty” nor “finty” are words in English. Accordingly, the Panel determines that the Domain Name is an intentional misspelling of the Complainant’s trademark and thus is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second ground to be demonstrated by the Complainant, according to the provisions of the Policy, is the Respondent’s absence of any rights or legitimate interests in the Domain Name, per paragraph 4(c) of the Policy.

Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the Domain Name.

The Panel is satisfied that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the EYEFINITY trademark in a domain name or in any other manner. The Complainant alleges that there is no such connection here. The Respondent is not known as either “Eyefinity” or “Eyefinty”.

The Complainant alleges that the Respondent uses the Domain Name to direct traffic to, among other sites, third party sites that distribute malware. As discussed further below in Section C, the distribution of malware is obviously not a bona fide offering of goods and such use can never confer rights or legitimate interests on the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.

The Respondent has not submitted any reply to the Complainant’s contentions.

Therefore, in light of the Complainant’s prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name

C. Registered and Used in Bad Faith

As an initial point, as regards registration in bad faith, the Panel did not consider the Complainant’s allegations of present-day reputation, as they pertain to events taking place well subsequent to the registration of the Domain Name. However, the Panel notes that the Respondent registered the Domain Name two years after the Complainant obtained registration, four years after the Complainant began use of its trademark, and four years after it registered its <eyefinity.com> domain name. EYEFINITY is a coined distinctive term. In fact, the Complainant appears to be the only owner of registrations containing the mark on the U.S. trademark register. In the absence of contrary evidence, the Panel concludes that the Respondent was aware of the Complainant’s rights at the time it registered the Domain Name, and that the Domain Name is a deliberate misspelling of its trademark.

The Panel also concludes that the Domain Name is a typo-site, and that the Respondent has intentionally attempted to use it to redirect Internet users to pages with malware or spyware by creating a likelihood of confusion with the Complainant’s mark. Furthermore, the dissemination of malware through a predictable typo-variant is not a good faith offering of goods or services, and is evidence of bad faith. See Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346.

Finally, the Complainant’s claims raise a somewhat unusual question, which is whether a respondent that is nominally a privacy service, can be said to have engaged in a pattern of bad faith conduct. The Panel concludes that in this situation, the answer is yes, because first, there is no evidence that this Respondent is in fact a privacy service. Additionally, by failing to disclose the contact data of any arms-length beneficial owner of the Domain Name, as it has apparently failed to do in eight prior proceedings, the Respondent accepts the ramifications of its registration in all such proceedings.

When the Complainant filed this Complaint, the Center contacted the registrar, who identified the Respondent, “Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818”. The Complainant amended its Complaint to name the Respondent. The amended Complaint included allegations that the Respondent was a serial cyber-squatter. The Center served a copy of the Complaint on the Respondent, which did not reply in any fashion to the Center.

Under the ICANN Registrar Accreditation License / Agreement, which at section 3.7.7 requires an ICANN-accredited registrar to include certain provisions in their registration agreement with Registered Name-Holders, a Registered Name-Holder that “intends to license use of a domain name” has seven days to disclose to a party such as the Center, when presented with reasonable evidence of actionable harm, whether it is not in fact the beneficial registrant or whether there is a licensee. If the registrant does not disclose contact information of the beneficial owner, as was the case here, then the registrant accepts liability for use of the relevant domain name. See section 3.7.7.3, accessed at: https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en#whois.

Here, the Complainant asserts that the Respondent, identified by the registrar as “Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818”, has engaged in a bad-faith pattern of conduct, pursuant to paragraph 4(b)(ii) of the Policy. The Complainant identifies nine decisions under the Policy from 2019 alone in which this Respondent, “Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818”, or similarly named entities, was also the respondent. “Savvy Investments LLC” is identified in all nine proceedings:

DivX, LLC v. Direct Privacy, Savvy Investments, LLC Privacy ID# 14313590, WIPO Case No. D2019-1745; Docler IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 911498, WIPO Case No. D2019-1712; monari GmbH v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 958942, WIPO Case No. D2019-1669; Intuit Inc. v. Privacy.co.com,Savvy Investments, LLC Privacy ID# 1088755, WIPO Case No. D2019-1659; BJ’s Wholesale Club, Inc. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 1118230, WIPO Case No. D2019-1257; Administradora Hotelera Dann S.A.S. v. Savvy Investments, LLC Privacy ID# 231197, WIPO Case No. D2019-0934; CC Media Network Limited and CC Network Inc. v. Domain Protection LLC / Savvy Investments, LLC Privacy ID# 784234, WIPO Case No. D2019-0855; Alpargatas S.A. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 884284, WIPO Case No. D2019-0777; 3A Composites GmbH v. Savvy Investments, LLC Privacy ID# 14316363 and Michalis Mavromichalis, WIPO Case No. D2019-0182.

The Respondent does not appear to have ever disclosed the names of beneficial owners of the registrations that were the subject of any of these proceedings, with the exception of WIPO Case No. D2019-0182, supra.

The use of the word “privacy” when filling out the registrant’s name, does not necessarily create a presumption that an entity is in fact a privacy service; it could merely be a name (e.g. as “private eye” for detective services). While it is possible that there is a licensee / beneficial owner of the Domain Name other than this Respondent, there is no evidence in this record as such. When the Respondent was served with a copy of the amended Complaint that alleged that it was a serial cyber-squatter (i.e. evidence of actionable harm), the Respondent had an opportunity to identify a licensee / beneficial owner of the Domain Name, if there was one, or to present any substantive response on its own behalf. It chose not to. It had an opportunity to identify licensees / beneficial owners in eight of the proceedings listed in the amended Complaint, and chose not to do so.

Registrants that do not disclose licensees / beneficial owners – if indeed there is one – after being placed on notice of claims of abusive behavior associated with a domain name, have contractually obligated themselves to accept responsibility for the registration of those domain names; this is a basic agency law principle. The Panel concludes that the registration of this Domain Name is part of a pattern of bad faith conduct by the Respondent, Privacy.co.com, Savvy Investments. Together with the evidenced redirection of the Domain Name to various third-party sites, of which some purportedly distribute malware, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <eyefinty.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: December 7, 2019