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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clearly Lasik v. Adrian Boelen

Case No. D2007-1498

1. The Parties

The Complainant is Clearly Lasik, United States of America, represented by Ian Lurie, United States of America.

The Respondent is Adrian Boelen, Canada, represented by Stikeman Elliott, Canada.

2. The Domain Name and Registrar

The disputed domain name <clearly-lasik.net> is registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 12, 2007, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 12, 2007, AAAQ.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2007. The Response was filed with the Center on November 22, 2007.

The Center appointed Alexandre Nappey as the sole panelist in this matter on December 3, 2007. 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.

By email October 12, 2007, AAAQ.com Inc informed the Center that the language of the registration agreement relating to the Disputed Domain Name was English. The Response was submitted in French. By its e-mail dated November 23, 2007 acknowledging receipt of the Response, the Center observed that the Response was submitted in French even though according to the Registrar verification, the language of the Registration agreement was English. The Complainant agreed to have the Response translated on his own while acknowledging receipt on November 23, 2007. On this basis, the Panel decides pursuant to paragraph 11 of the Rules that the language of the proceedings shall be English which is the language of the registration agreement relating to the Disputed Domain Name, even though the Response and the exhibits attached were filed in French. The Panel did not consider it necessary to request an English translation of these documents given that it understood them in their original language. See decision in Atlantic, Sociйtй Franзaise de Dйveloppement Thermique v. Dowd, Kevin, WIPO Case No. D2007-1063.

4. Factual Background

The Complainant provides laser eye surgery services using the latest generation of laser vision correction technology. It holds several centers in both the United States and Canada.

The Complainant claims rights on the trademark CLEARLY LASIK on the basis of a Canadian trademark registration dated August 7, 2007 and a US pending application filed on March 17, 2005.

The Complainant is using the domain name <clearlylasik.com> to operate a website promoting its services since May 2005. The domain name is registered since March 9, 2005 in the name of Ian Lurie, the Complainant’s representative in the present proceedings.

The disputed domain name <clearly-lasik.net> has been registered by the Respondent on February 9, 2006. It resolves a website providing basic information on the different types of laser vision correction procedures and promoting several eye surgery specialists.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it operates eye surgery clinics in Canada and North of the USA under the name CLEARLY LASIK, which is a trademarked name in Canada.

The Complainant contends that its trademark, which use is claimed since March 4, 2005, is strictly reproduced in the disputed domain name <clearly-lasik.net>.

According to the Complainant, the Respondent has no right or legitimate interest in the domain name in issue, nor in two other domain names nearly identical to the trademark CLEARLY LASIK that the Respondent registered at the same time. However the Complainant only places its complaint against the domain name <clearly-lasik.net> and does not provide any further information about the other so-called infringing domain names.

The Complainant’s trademark is very likely known to the Respondent, who is seeking to take advantage of the CLEARLY LASIK trademark, by pointing the domain name to a parking page to redirect traffic to other laser vision and eye surgery websites.

The Respondent’s use of the domain name is without any authorization of the Complainant while being only an attempt to attract the Internet users for commercial gain.

Last, Complainant has contacted the Respondent to recover the three domain names (including the disputed one) in exchange for out-of-pocket costs, but the Respondent refused to transfer any of these, and particularly <clearly-lasik.net>.

Therefore the Complainant requests that the domain name <clearly-lasik.net> be transferred to the Complainant.

B. Respondent

The Respondent submitted a fully documented Response in due time on November 22, 2007.

The Respondent first contends that the Complainant cannot claim any right on the wording CLEARLY LASIK as a trademark, on the following grounds:

- The Complainant is not the registered owner of the trademarks claimed in the complaint,

- Some of the trademark claimed are completely irrelevant with the present case, i.e. figurative Canadian trademark TMA 695,207 (CLEARLY LASIK logo) and Canadian word mark THE BEST IN SIGHT TMA 693,563.

- The trademark claimed by the Complainant on CLEARLY LASIK is completely descriptive and has not any distinctive character according to the Canadian Law.

- There are both in the US and Canadian Trademark Offices numerous trademarks consisting of the wording LASIK,

- The CLEARLY LASIK trademark is not registered for services in the field of internet advertising and promotion.

The Respondent then asserts that it has a legitimate interest in the domain name since it was registered in February 9, 2006. At that time the Complainant had not filed application for the trademark CLEARLY LASIK yet. The Respondent claims that it could not have been aware of the existence of the trademark or that such mark was in use. According to the Respondent the use of the domain name to promote eye surgery and ophthalmic services is in good faith.

The Respondent contests that it has registered and is using the domain name in bad faith. The well-known character of the trademark CLEARLY LASIK claimed by the Complainant is also disputed as being not evidenced.

The Respondent contends that it did not register the domain name in issue primarily for the purpose of selling, renting or otherwise transferring to the Complainant. The domain name was not offered for sale to one of the Complainant’s competitors.

On the contrary the Respondent underlines that it refused to sell the disputed domain name when the Complainant offered to buy it in exchange for out-of-pocket costs, stating that it is not obliged to.

Furthermore the Respondent ascertains that the domain name in issue has not been registered to prevent the Complainant from reflecting its trademark in a corresponding domain name, nor to disrupt the business of a competitor as the Respondent and the Complainant are not competitors.

Finally the Respondent claims that the Complaint has been submitted in bad faith, and requests a finding of reverse domain name hijacking against the Complainant pursuant to Rules paragraph 15 (e).

Consequently, the Respondent requests that the Complaint be rejected.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:

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

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

(iii) that the domain name has been registered and is being used in bad faith.

Having considered the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above cited elements are the following:

A. Identical or Confusingly Similar

The first question is to determine whether the Complainant has trademark rights in the name CLEARLY LASIK.

The Complainant claims that it holds trademark rights on CLEARLY LASIK in Canada The Panel does not pay attention to the other trademarks claimed by Complainant which are not relevant in this dispute, as noted by the Respondent. The Canadian trademark the Complainant refers to appears to be registered in the name of Clearly Lasik Inc, Las Vegas, Nevada, while the Complainant address is located at Renton, Washington.

In order to successfully base its claim, on this trademark the Complainant would need to explain this apparent inconsistency, and if the holder of the mark was in fact an entity different from Complainant, to further evidence supporting a relationship with the holder of the trademark.

However the Panel notes that the Complainant has applied for the trademark CLEARLY LASIK in the United States of America in March 2005, thanks to the evidence provided by the Respondent. The application is pending but the question is whether the Complainant could claim unregistered trademark rights on the wording CLEARLY LASIK to support its case.

It is indeed a consensus view that the application of the Policy is not limited to registered trademarks or service marks.

As stated by the Panel in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322: “it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a ‘trademark or service mark’ in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. (…) Therefore, in the Panel’s view, the fact that in this case Complainant has no registered trademark or service mark for THE IDEA LEAGUE does not preclude a finding that it has established trademark or service mark rights in that name for the purpose of the Rules. Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.”

To assert common law trademark rights the Complainant must establish that the name has achieved secondary meaning or association with the Complainant.

In order to demonstrate secondary meaning the Complainant may show evidence of continuous use of the proposed mark, revenues invested in the promotion of the Complainant’s products and services under the mark, awareness of the name’s association with the Complainant and appearing in marketing materials. See decision in Australian Trade Commission v. Matthew Reader, WIPO D2002-0786.

The Panel finds that Complainant has been identifying itself under CLEARLY LASIK from at least 2005. This is the name under which the Complainant has promoted its services online at “www.clearlylasik.com” since May 2005, according to the information displayed at “www.archive.org”.

The domain name <clearlylasik.com> has been registered on March 9, 2005 in the name of Ian Lurie, the Complainant’s representative in these proceedings.

The Panel is satisfied that the trademark CLEARLY LASIK is inherently distinctive, and merely notes in support of its finding that the Canadian trademark office also found the combination of CLEARLY with LASIK, in the August 2007 registration, to be distinctive.

It is also observed on the basis of the documentation submitted by the Respondent that many other trademarks are combining the wording LASIK (which is an acronym of LAser in SItu Keratomileusis) with other words have been found distinctive and registered.

On balance, the Panel finds that Complainant has established it holds common law trademark rights in the name CLEARLY LASIK.

The Respondent also claims that the Complainant’s trademark is not registered for Internet advertising and promotion services.

However this may be the, Panel notes certain principles under the UDRP, and especially the test for confusing similarity.

As stated in WIPO Panel Views on Selected UDRP Questions “The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion”.

See decision in case Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698:

“Accordingly, this panel regards the appropriate test for confusing similarity to be a comparison of the domain name and the mark, following Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) ( WIPO Case No. D2000-0109) and The Forward Association, Inc., (supra). (…)

But there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website.”

The second question is to determine whether the domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Panel is satisfied that the domain name <clearly-lasik.net> is identical or at the very least highly similar to the CLEARLY LASIK mark.

On the one hand, the “.net” top level domain suffix is a DNS system technical requirement, and it is not considered in comparing the domain name at stake with the trademark rights.

On the other hand, considering that the DNS system does not allow holders to reflect an existing space between the two or more words in a trademark, domain name registrants typically alternately attach the words or their mark or put an hyphen between them.

In the present case, while the Complainant has apparently used the first solution when registering <clearlylasik.com> the Respondent apparently selected the other way of registration with the disputed domain name <clearly-lasik.net>, which is a not sufficiently distinguishable from the trademark in which the Complainant has rights.

The Complainant has met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s mark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant is required to prove that the Respondent has no right nor legitimate interest with respect to the disputed domain name.

To support its claim, the Complainant only states that the Respondent has no right or legitimate interest in the name. On the contrary the Respondent states that it could not have been aware of the trademark when he registered the domain name because there was no trademark application at that time, and therefore it has a legitimate interest in the name.

Even if the Panel notes that the Complaint is succinct and includes limited supporting material, it should be also noted that the Respondent does not provide any evidence of its right or legitimate interest in the name.

The Panel observes that the Complainant did not grant any authorization to the Respondent for registering and using the disputed domain name.

At the time the disputed domain name was registered, the Complainant had already filed an application for the trademark CLEARLY LASIK in the United States of America. Therefore a mere trademark search would have allowed the Respondent to be informed of the Complainant rights.

Furthermore it has been previously stated that the Complainant was doing business under the name CLEARLY LASIK and was promoting its services on the Internet from the address "www.clearlylasik.com".

The Panel finds it hard to imagine the Respondent having a legitimate interest in the disputed domain name when the Respondent has been promoting eye surgery services in apparent competition with those of the Complainant under the disputed domain name.

The Panel therefore finds that the Complainant has on balance satisfied the second requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant is required to prove that the domain name in issue has been registered and is used in bad faith.

According to the preliminary information sent by the Respondent attorney to the Center, it appears that the Respondent is not only an individual established in Quebec. To satisfy a requirement from the Center asking for the relationship between the Respondent and its representative, by e-mail of October 22, 2007, the Respondent attorney informed that he was “the attorney and legal representative of Mr. Adrian BOELEN and LasikMD Inc, in the above referenced matter”.

LasikMD Inc appears to be in the same area of business as the Complainant.

The Panel also observes that the Parties have eye surgery centers in at least four common places in the United States of America and Canada (Edmonton – Canada , Boise, Portland and Seattle in the United States of America).

It is the Panel opinion that the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the disputed domain name <clearly-lasik.net>.

The disputed registration seems therefore to have been operated at least in part either to disprupt the business of the Complainant and/or to prevent the Complainant from reflecting its trademark in a corresponding domain name.

The Complainant has shown that the disputed domain name resolves to a parking web-page offering sponsored links. The Panel finds that the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services, by creating a likelihood of confusion with the Complainant’s trademarks and business.

Furthermore, contrary to the Respondent contentions, there are some ads promoting LasikMD Inc eye surgery services on the disputed webpage.

By exploiting the CLEARLY LASIK mark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the domain name by providing sponsored links on the corresponding website obtaining revenues from the diverted traffic.

See in similar circumstances the Panel decision in case Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002:

“the Panel also considers that the Respondent registered the domain name <toyota-occasions.com> with a view to distracting possible customers of the Complainants and attract them towards his own site in the mistaken belief that they are visiting an official website of the Complainants.”

In light of all the above, the Panel is satisfied that the third element is met and that the domain name <clearly-lasik.net> has been registered and is used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <clearly-lasik.net> be transferred to the Complainant.

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Alexandre Nappey
Sole Panelist

Dated: December 17, 2007