Lorillard Licensing Company, LLC v. Nathan Shaw
Claim Number: FA1301001480068
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Nathan Shaw (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truevapor.com>, 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 January 14, 2013; the National Arbitration Forum received payment January 14, 2013.
On January 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <truevapor.com> 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 has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2013, 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@truevapor.com. Also on January 16, 2013, 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 February 11, 2013, 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 records, 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.
Complainant owns the trademark rights for its TRUE mark, through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 900,557 registered October 13, 1970). See Annex 4. Complainant uses its TRUE mark in relation to its cigarette products. Complainant first began using its TRUE mark in 1966 and has used it continuously since that time. Currently Complainant is the third largest tobacco company in the United States, and still actively promotes its TRUE brand cigarettes to consumers.
Respondent registered the <truevapor.com> domain name January 21, 2009, and the disputed domain name is confusingly similar to Complainant’s TRUE mark. The <truevapor.com> domain name resolves to a website that promotes an unauthorized online store selling products similar to those offered by Complainant. Respondent is not commonly known by the <truevapor.com> domain name and has no authorization to use the TRUE mark in any way. The <truevapor.com> domain name is confusingly similar to Complainant’s TRUE mark. Respondent registered and uses the <truevapor.com> domain name in bad faith by establishing a website intended to confuse consumers and produce a commercial gain as a result of selling goods in competition with Complainant’s goods. Respondent had actual or constructive knowledge of Complainant’s TRUE mark at the time it registered the <truevapor.com> domain name.
The Panel notes that Respondent registered the disputed domain name January 21, 2009, some 39 years after Complainant registered its mark.
Complainant established legal rights in its mark.
Respondent registered a domain name containing Complainant’s mark in its entirety and adding a related descriptive word “vapor.”
Respondent had no rights to or legitimate interests in using Complainant’s protected mark in a confusingly similar domain name.
By Respondent’s use, the Panel finds that Respondent knew of Complainant’s rights in the mark and 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests relative to 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.”).
Identical to or Confusingly Similar
Complainant asserts rights in its TRUE mark through its USPTO registrations of the mark (e.g., Reg. No. 900,557 registered October 13, 1970). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel found that USPTO trademark registration was adequate to demonstrate rights in a mark pursuant to the Policy. The Panel finds that Complainant established rights to the TRUE mark through its USPTO registration under a Policy ¶ 4(a)(i) analysis.
Complainant contends that the <truevapor.com> domain name is confusingly similar to its TRUE mark, stating that the domain name includes the entire mark, in addition to the descriptive term “vapor,” which Complainant argues relates to the matter emitted from its cigarette products, thereby adding to the confusion. The Panel notes that the domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <truevapor.com> domain name is confusingly similar to Complainant’s TRUE mark for the purposes of Policy ¶ 4(a)(i), as a result of the addition of a descriptive term and a gTLD. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 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 is in no way affiliated with Complainant and Respondent trades off the goodwill associated with Complainant’s mark. The Panel notes that Complainant does not assert that Respondent is not commonly known by the <truevapor.com> domain name, but the Panel notes that the WHOIS information reveals “Nathan Shaw” to be the registrant of the domain. The Panel finds that the registrant information, as well as Complainant’s assertion that Respondent is not affiliated with its company, demonstrate that Respondent is not commonly known by the <truevapor.com> domain name and therefore does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent uses the <truevapor.com> domain name to make a commercial gain by misleading customers to its website to promote its online store, which offers Internet users similar products to those Complainant offers. The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), stated that the respondent capitalized off of the complainant’s mark by attracting Internet users to its website where the respondent sold competing products, was not a bona fide offering of goods or services and it was not a legitimate noncommercial or fair use. The Panel finds that Respondent competes with Complainant by selling goods in competition with Complainant’s business, and finds that such use of the <truevapor.com> domain name does not demonstrate 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 ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant makes the assertion in its Policy ¶ 4(a)(ii) section that Respondent’s use of the <truevapor.com> domain name to offer competing goods to that of Complainant is disruptive because such use diverts potential customers and reduces Complainant’s potential sales. The Panel agrees and finds that Respondent’s use of the disputed domain name to compete with Complainant in selling similar goods to those offered by Complainant, supports findings of bad faith registration and use of the <truevapor.com> domain name under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant contends that Respondent registered the <truevapor.com> domain name because Internet users are likely to be confused by the domain name due to its similarity to Complainant’s TRUE mark, particularly because of the addition of the word “vapor,” and therefore attracted to the resolving website to purchase cigarettes. Complainant maintains that at the website, Internet users are “bombarded with marketing ploys” at the resolving website showing how the products are “similar but superior” to Complainant’s products. The panel in Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), held that evidence of bad faith was found when the respondent used the disputed domain name to divert Internet users to the resolving website, which offered competing computer products and services. This Panel finds that by establishing a website associated with the disputed domain name that offers products for sale in competition with Complainant’s business, Respondent registered and uses the <truevapor.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the TRUE mark when it registered the <truevapor.com> domain name. Complainant asserts that Respondent registered the disputed domain name forty-three years after Complainant began using its mark, and thirty-eight years after Complainant obtained a trademark registration for its mark with the USPTO. The Panel finds that USPTO registration provides Respondent with constructive notice of the TRUE mark, but this Panel also finds that Respondent had actual knowledge of Complainant’s mark and rights to exclusive use of the mark. While it is settled that constructive knowledge is not adequate in making a finding of bad faith registration under Policy ¶ 4(a)(iii), a Respondent’s use persuades the Panel that the Respondent acted with actual knowledge. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). The Panel finds that this Respondent’s actual knowledge of the TRUE mark as shown by its use of the confusingly similar domain name to offer competing and related goods to those marketed by Complainant under the TRUE mark, and the Panel finds that such use is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Respondent makes no contentions relative to 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 <truevapor.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 19, 2013.
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