Lorillard Licensing Company, LLC v. Lease Domains, Inc. / LeaseDomains.com
Claim Number: FA1210001467713
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Lease Domains, Inc. / LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newports-cigarettes.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 17, 2012; the National Arbitration Forum received payment October 17, 2012.
On October 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <newports-cigarettes.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newports-cigarettes.org. Also on October 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not affiliated with Complainant and has not been licensed or authorized to use the NEWPORT mark.
ii. Respondent is using the disputed domain name to provide hyperlinks to third-party websites that compete with Complainant for Respondent’s commercial gain.
i. Respondent is using Complainant’s NEWPORT mark to mislead and redirect Internet users to Complainant’s competitors via third-party hyperlinks for which Respondent is presumably commercially compensated for. Such use of the disputed domain name causes confusion as to Complainant’s affiliation with the resolving website for Respondent’s gain, which is evidence of bad faith under Policy ¶ 4(b)(iv).
ii. Respondent registered the disputed domain name because the name contained the famous NEWPORT trademark. Respondent registered the disputed domain name nearly 55 years after Complainant began using the mark. Under such circumstances it is evident that Respondent had actual or constructive knowledge of Complainant’s rights in the NEWPORT mark.
The Panel notes that Respondent registered the <newports-cigarettes.org> domain name June 2, 2011, some thirty-three years after Complainant’s registration of its protected mark.
Complainant established rights in a mark used in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of 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 Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims that it owns the NEWPORT family of marks with the USPTO (e.g., Reg. No. 1,108,875 registered Dec. 12, 1978), which Complainant uses to market and sell its cigarette products. See Complainant’s Annex 4. The Panel finds that Complainant submitted sufficient evidence to establish rights in the NEWPORT mark under Policy ¶ 4(a)(i), through its trademark registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Further, Complainant asserts that Respondent’s <newports-cigarettes.org> domain name is confusingly similar to the NEWPORT marks, as the NEWPORT mark is used entirely in addition to the descriptive term “cigarettes.” Further, Complainant asserts that the addition of a hyphen and the gTLD “.org” are irrelevant under Policy ¶ 4(a)(i). The Panel notes that the disputed domain name also adds the letter “s” to Complainant’s NEWPORT mark. Based upon the observed similarities between the disputed domain name and Complainant’s mark, the Panel finds that Respondent’s <newports-cigarettes.org> domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights to or legitimate interests in the <newports-cigarettes.org> domain name as Respondent is not affiliated with Complainant and has not been licensed or authorized to use the NEWPORT mark. The Panel notes that the WHOIS registrant information identifies: “Lease Domains, Inc. / LeaseDomains.com”, as the registrant of the disputed domain name. The Panel finds that neither the WHOIS information nor any other evidence on record indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is not using the <newports-cigarettes.org> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as Respondent is using the disputed domain name to provide hyperlinks to third-party websites that compete with Complainant for Respondent’s commercial gain. See Complainant’s Annex 2. The Panel notes that the screenshot submitted by Complainant appears to support its assertions as the website features “related searches” link headings for “Newport 100 Cigarettes for Sale,” “Buy Cigarettes,” “Cheap Cigarettes,” and others. The Panel notes that such use of a disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent is not using the <newports-cigarettes.org> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using Complainant’s NEWPORT mark to mislead and redirect Internet users to Complainant’s competitors via third-party hyperlinks for which Respondent is presumably commercially compensated. Complainant argues that such use of the disputed domain name causes confusion as to Complainant’s affiliation with the resolving website for Respondent’s gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith under a Policy ¶ 4(b)(iv) analysis where the evidence shows that Respondent is using the domain name at issue as a links directory website for Complainant’s competitors. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also argues that Respondent registered the disputed domain name because the name contained the famous NEWPORT trademark. Complainant notes that Respondent registered the disputed domain name nearly 55 years after Complainant began using the mark, and 33 years after registration. Under such circumstances it is evident that Respondent had actual or constructive knowledge of Complainant’s rights in the NEWPORT mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newports-cigarettes.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 11, 2012.
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