6th Apr 2006

National Arbitration Forum

DECISION

The Eye Academy of America Ltd. and Total Vision Eye Care Group, P.C. v. Ashantiplc Limited

Claim Number: FA0602000644205

PARTIES

Complainants are The Eye Academy of America Ltd. and Total Vision Eye Care Group, P.C. (collectively, “Complainant”), represented by Brad Anderson, 3900 East Mexico, Suite 102, Denver, CO 80210.Respondent is Ashantiplc Limited (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <persona.com>, registered with Moniker Online Services, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.

Steven L. Schwartz and Terry F. Peppard, as Panelists; and Honorable Karl V. Fink (Ret.), as Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2006.

On February 13, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <persona.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 February 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 14, 2006 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@persona.com by e-mail.

A timely Response was received and determined to be complete on March 14, 2006.

A timely additional submission was received from Complainant but payment was received after the deadline for submission.

A timely additional submission was received from Respondent on March 27, 2006.

All submissions were considered by the Panel.

On March 22, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Steven L. Schwartz and Terry F. Peppard, as Panelists; and Honorable Karl V. Fink (Ret.), as Chair.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant in this administrative proceeding is The Eye Academy of America, Ltd. (“TEA”), a Delaware Corporation with its principal place of business in Colorado.TEA is the sole shareholder in Total Vision Eye Care Group, P.C (“TVEC”), a Colorado Corporation. TVEC is the registrant of record for the mark PERSONA.

Complainant’s mark PERSONA is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,695,804 issued January 17, 2002).

Complainant develops and promotes a wide range of products and services under the PERSONA mark including but not limited to, health care products, owning and operating LASIK clinics, skin care services, skin care products, various Internet services, and other general health care and manufacturing services. Complainant currently has employees and facilities in the United States, Mexico, and China.Complainant’s reach extends to hundreds of additional countries based upon its marketing efforts to consumers and consumers’ use of its products in commerce.

Complainant’s PERSONA mark is identical to Respondent’s disputed <persona.com> domain name, only adding the generic top-level domain “.com,” which is irrelevant.

Respondent does not have any rights or legitimate interests in the disputed <persona.com> domain name.

Respondent did not request, nor did it ever receive permission to use the PERSONA mark from Complainant.

Respondent’s only use of the <persona.com> domain name is to operate a generic search engine website that displays links to third-party products and services, including websites and products that compete with Complainant’s offerings.

Using a generic search engine signifies that Respondent does not intend to use the domain name for a legitimate commercial purpose. If Respondent had actual good faith intent to develop the domain name, it would not utilize domainsponsor.com to generate revenue and infringe on Complainant’s mark.

Respondent is not commonly known as PERSONA or any other variation of the mark.

Respondent’s commercial use of the domain name is identical to Complainant’s mark, and Respondent is deriving a commercial benefit while simultaneously causing harm to Complainant’s mark.

Through domainsponsor.com, Respondent receives a percentage of the fees paid by Complainant to search engines such as Google and Yahoo! for advertising of Complainant’s registered mark. This indirect payment from Complainant to Respondent does not create a license for Respondent’s use of Complainant’s mark.

Respondent’s use of the domain results in a likelihood of confusion with Complainant’s mark as to the source of the material contained on the website <persona.com>.

Respondent registered and uses the <persona.com> domain name in bad faith.Respondent registered the contested domain name with at least constructive knowledge of Complainant’s rights in the PERSONA mark by virtue of Complainant’s prior filing for registration of that mark with the USPTO.

Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.

B. Respondent

This is a case of reverse domain name hijacking.Complainant obviously has no rights to <persona.com> (the “Disputed Domain”) because persona is a common word in the dictionary as in “persona non grata.”Persona is also the Spanish word for “person.”

Respondent lawfully purchased the Disputed Domain in June 2003 from its prior owner in an eBay auction, and did so only because it incorporates a common word.Respondent had no knowledge of Complainant’s trademark when it acquired the Disputed Domain, and there is no evidence to the contrary.Respondent’s good faith basis for registering the domain is corroborated by its pattern of having registered many other common word domain names.

Respondent’s legitimate interest is established in the name because it solely incorporates a common word to which Complainant does not have exclusive rights.The word “persona” is subject to tremendous third party use and there are several other registered trademarks incorporating this common word.

The only thing that Complainant hangs its claim on is that a link associated with “lasik” has appeared on the web page at <persona.com>.However, this does not constitute bad faith on the part of Respondent because the links were auto-generated by Domain Sponsor without Respondent’s authorization or knowledge.In addition, the number of searches for keywords related to Complainant’s services were minimal.Prior to the start of Respondent’s affiliate relationship with Domain Sponsor on February 1, 2006, Respondent had used the Disputed Domain in connection with other affiliate programs for over two years, during which time no links relating to lasik, or any services associated with Complainant, appeared.

Respondent did not register the Disputed Domain in bad faith since from the time Respondent acquired <persona.com>, and several years thereafter, there were no links associated with Complainant’s services and Respondent has not used the Disputed Domain in bad faith since at no time did it make affirmative efforts to associate <persona.com> with Complainant.

The Disputed Domain solely incorporates the common word “persona,” which means among other things “one’s public image or personality.”Persona is also the Spanish word for “person.”A Google search for “persona” yielded 122 million third party web pages containing the term.There are also 38 third-party registered and pending U.S. trademarks which incorporate the term persona.Only a very small percentage of the searches conducted by users on <persona.com>, during the time it has been hosted at Domain Sponsor, have been for lasik or eye care services.

When Respondent originally acquired the Disputed Domain it pointed it to an affiliate program operated by Roar.com, which placed paid links on the page for online dating (as persona is close to the word “personals”).

On February 1, 2006, Respondent entered into an affiliate agreement with DomainSponsor.com (“Domain Sponsor”) and began pointing the Disputed Domain there.Domain Sponsor has automated technology that places links on a web page associated with the contextual meaning of the word in a domain name and also places additional links based upon what users search for after arriving at the domain name page.

Based on this behavioral optimization, one link that appeared on <persona.com> was related to “lasik.”Prior to receipt of the Complaint, Respondent had no knowledge that this link was on the web page.In addition to Lasik, over 50 other links appeared on the web page.Complainant’s Annex 4 to the Complaint creates the false impression that links to its competitors appear immediately upon a user typing in <persona.com>.However, Annex 4 is merely the page that appears after a user clicks on the link for lasik on the initial page.

The links and advertisements that appear on <persona.com> are put there by Domain Sponsor’s automated technology without the knowledge or authorization of Respondent.

There are no facts to support a finding that Respondent registered or used the Disputed Domain in bad faith.

It is clear that Complainant does not have exclusive rights to this common term “persona.”Respondent’s legitimate interest is bolstered by the fact that it has used the Disputed Domain to post advertising links, which relate to the meaning of “persona.”

Respondent had no knowledge of the existence of Complainant or its alleged trademark when it registered the Disputed Domain and, thus, bad faith cannot be proven.Nor was there a basis for Respondent to have knowledge of Complainant’s mark.Because Respondent is not in the same business as Complainant there was no duty for it to be aware of Complainant’s mark.

Absent direct proof that a common word domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.

Respondent registered and used the Disputed Domain for more than two years before it pointed it to Domain Sponsor and at no time during that two year period did any link related to Complainant’s business appear on <persona.com>. The short period of time that the lasik link appeared on Domain Sponsor would not alter the fact that the Disputed Domain was registered in good faith.

Complainant’s current position – that it is entitled to a transfer of the domain name from Respondent – is belied by Complainant’s initial inquiry to Respondent as to whether the domain name might be available for sale.

C. Additional Submissions

Complainant

Complainant’s federally registered mark is, and according to Respondent’s contentions, will continue to be infringed upon.

Use of an automated means to aid in Respondent’s infringement of Complainant’s registered mark establishes lack of a legitimate interest and bad faith registration and use.Utilizing Domain Sponsor, Respondent generates revenue by infringing on Complainant’s registered mark, thus creating a likelihood of confusion with Complainant’s mark.

Respondent admits infringement of Complainant’s registered mark but unsuccessfully tries to justify infringement because Respondent’s infringement is in some way minor. Respondent’s infringement is not minor to Complainant, or to Complainant’s customers, who are confused as to the source of the webpage.

According to Respondent, infringement is justified because it only recently began infringement and it is using an automated process.Infringement occurred before using Domain Sponsor. In fact, infringement that causes a likelihood of confusion did occur before Domain Sponsor was used, it has occurred with Domain Sponsor, and will only increase with the use of the automated process.

Complainant has viewed its own ads on the disputed web site giving Complainant strong reason to believe that Respondent is making money from the strength of the PERSONA mark.

Respondent

Nowhere in the Response does Respondent claim that the word “Persona” does not appear on the page that <persona.com> points to.

Respondent does not admit infringement of Complainant’s mark, nor does it claim that allowing a computer program to improve ones infringement makes it acceptable.

It is not reasonable to argue that Respondent is intending to infringe on Complainant’s mark when only 3.7% of the clicks related to Complainant’s services.

Complainant cannot claim that Respondent registered <persona.com> in bad faith in June 2003 when not a single link relating to Complainant’s services appeared on <persona.com> from June 2003 until February 2006.

FINDINGS

For the reasons set forth below, the Panel finds that Complainant has failed to prove the required elements of its claim.

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

Complainant asserts that it has established rights in the PERSONA mark through registration with the United States Patent and Trademark Office (“USPTO”) (“Reg. No. 2,695,804 issued March 11, 2003).Complainant develops and promotes a wide range of products and services under the PERSONA mark including, but not limited to health care products, the operation of Lasik clinics, skin care services and products and other general health care and manufacturing products.The Panel finds that Complainant has rights in the PERSONA mark.See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).

Complainant also asserts that the <persona.com> domain name is identical to complainant’s PERSONA mark because it incorporates Complainant’s mark in its entirety with the only difference being the addition of the generic top-level domain “.com,” which is not sufficient to distinguish the domain name from the mark.The Panel finds that Respondent’s domain name is identical to Complainant’s PERSONA mark.SeeBusy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“The addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants.”); see also Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Respondent states that it does not dispute that the disputed domain name is identical and confusingly similar to Complainant’s mark.

Complainant has proven this element.

Rights or Legitimate Interests

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

The Panel finds that Complainant failed to establish that Respondent does not have rights or legitimate interests in the mark.See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, “the Panel may decline to transfer the disputed domain name”); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name).

Respondent asserts that it has rights in the disputed domain name because the term “persona” is a common word in the dictionary as in the “persona non grata.”Respondent also asserts that the term “persona” is the Spanish word for “person.”Respondent further states that a Google search for the term “persona” yields over 122 million third party web pages containing the term.Additionally, there are currently 38 third party U.S. trademark registrations and pending applications incorporating this term.The Panel finds that common generic words are open for registration, and thus, Respondent has rights and legitimate interests in a domain name comprised of a generic term.See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the complainant failed to establish that the respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is wholly comprised of generic words, even though the complainant is the owner of the FILMNET mark); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).

Complainant has not proven this element.

Registration and Use in Bad Faith

The Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of the domain name at issue, there is no need to decide the issue of bad faith.”).

Complainant’s Annex 2 shows the first registration date for <persona.com> was October 25, 2001.Complainant’s Annex 4 states the federal application for the mark PERSONA was filed January 16, 2002 and the mark was registered March 11, 2003.

Respondent contends that it had no knowledge of the existence of Complainant or its alleged trademark when it registered the disputed domain name and thus, bad faith cannot be proven.Furthermore, Respondent’s predecessor registered the <persona.com> domain name prior to Complainant’s registration of its PERSONA mark with the USPTO.The Panel finds that this negates any claim of bad faith registration and use under Policy ¶ 4(a)(iii).See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name”); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).

Complainant has failed to prove this element.

Claim of Reverse Domain Name Hijacking

To establish reverse domain name hijacking, it must be shown that Complainant proceeded in bad faith.See Crédit Agricole Indosuez Luxembourg s.a. v. Patrick G O’Regan, D 2000-1300 (WIPO Nov. 15, 2000)The Panel finds that the required bad faith has not been proven.

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Honorable Karl V. Fink (Ret.), Chair

Terry F. Peppard, Panelist & Steven L. Schwartz, Panelist

Dated: April 6, 2006