Lorillard Licensing Company, LLC v. N/A / Mihail Petrenko
Claim Number: FA1301001482947
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP US, California, USA. Respondent is N/A / Mihail Petrenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettes.net>, registered with DomainContext Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
On Febuary 1, 2013, DomainContext Inc. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes.net> domain name is registered with DomainContext Inc. and that Respondent is the current registrant of the name. DomainContext Inc. has verified that Respondent is bound by the DomainContext Inc. 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 February 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@newportcigarettes.net. Also on February 5, 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 March 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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.
A. Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.
1. Complainant has rights in the NEWPORT mark with the United States Patent & Trademark Office (“USPTO”) which it uses in conjunction with the sale and marketing of cigarettes and tobacco products. See Reg. No. 1,108,876 registered on Dec. 12, 1978).
2. Respondent’s <newportcigarettes.net> domain name is confusingly similar to the NEWPORT mark. The combination of the mark with the term “cigarettes” does nothing to distinguish the domain name because the term is merely descriptive of the products sold under the NEWPORT mark.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in this domain name.
3. Respondent does not have license or permission to use the NEWPORT mark in its domain names. Respondent has never been affiliated with Complainant or its NEWPORT mark.
4. Respondent is not using the domain name in furtherance of a bona fide offering or goods or services nor is the use a legitimate noncommercial or fair use. The <newportcigarettes.net> domain name currently resolves to a website featuring an online store where Internet users are directed to purchase products sold by Complainant. Respondent is not an authorized seller of Complainant’s goods.
Policy ¶ 4(a)(iii): Respondent registered and used the domain name in bad faith.
5. Respondent is disrupting Complainant’s business in bad faith.
6. Respondent has intentionally attempted to attract Internet users through confusion in order to attract a commercial gain. Respondent sought to mask itself as the owner of the NEWPORT mark, thus luring Internet users into believing they were engaged in legitimate business transactions with Complainant.
7. Respondent had to have actual or constructive knowledge of Complainant’s rights in the mark. Respondent registered the domain name 54 years after the original registration of the name, and the name is being used to sell NEWPORT brand products.
B. Respondent’s Contentions
1. Respondent did not submit a Response.
1. Respondent’s <newportcigarettes.net> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportcigarettes.net > domain name.
3. Respondent registered and used the <newportcigarettes.net > 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 that 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 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.
In view of 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 draw such inferences it 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 it has rights in the NEWPORT mark as a result of its registrations for the mark with the USPTO. Complainant asserts that it uses the mark in conjunction with the sale and marketing of cigarettes and tobacco products. See Reg. No. 1,108,876 registered on Dec. 2, 1978. The Panel agrees that USPTO registration satisfies Complainant’s showing of rights under Policy ¶ 4(a)(i), even when Respondent resides in the Ukraine. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant next argues that Respondent’s <newportcigarettes.net> domain name is confusingly similar to the NEWPORT mark. Complainant asserts that the combination of the mark with the term “cigarettes” does nothing to distinguish the domain name because the term is merely descriptive of the products sold under the NEWPORT mark. The Panel notes the addition of the generic top-level domain (“gTLD”) “.net,” and the Panel agrees that the addition of the gTLD does nothing to distinguish the name from the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant that the addition of the term “cigarettes” enhances the confusing similarity of the domain name because the term is descriptive of the types of products sold under Complainant’s mark. 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). Therefore the Panel concludes that the <newportcigarettes.net> domain name is confusingly similar to the NEWPORT mark under 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 shifts to Respondent to show it does have 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 contends that Respondent does not have license or permission to use the NEWPORT mark in its domain names. Complainant argues that Respondent has never been affiliated with Complainant or its NEWPORT mark. The Panel notes that the WHOIS information lists “N/A—Mihail Petrenko” as the registrant of the name. Previous panels have concluded that a respondent is not commonly known by a domain name when there is no evidence to suggest otherwise. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Therefore the Panel concludes that Respondent is not commonly known as the <newportcigarettes.net> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the domain name in furtherance of a bona fide offering or goods or services, nor is the use a legitimate noncommercial or fair use. Complainant claims that the <newportcigarettes.net> domain name currently resolves to a website featuring an online store where Internet users are directed to purchase products sold by Complainant. Complainant asserts that Respondent is not an authorized seller of Complainant’s goods. The Panel notes that the domain name currently resolves to a website offering “duty free prices” for cigarettes, along with a brief essay giving a general overview of arguments, both for and against, smoking NEWPORT products. See Complainant’s Ex. 2. Previous panels have agreed that whether a domain name is being used to compete directly with a complainant, or if the domain is being used in an attempt by respondent to pass itself off as complainant, the end result is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore the Panel concludes that Respondent’s use of the <newportcigarettes.net> domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant generally states that Respondent is disrupting Complainant’s business in bad faith. The Panel notes that although Complainant offers no additional support for this argument beyond this conclusory statement, the record illustrates that the domain name is being used to offer Complainant’s own products for sale for Respondent’s benefit. See Complainant’s Ex.2. The Panel chooses to agree that the use of the <newportcigarettes.net> domain name to sell Complainant’s own products is illustrative of Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii) because it creates competition for Complainant that disrupts Complainant’s business. See Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent has intentionally attempted to attract Internet users through confusion in order to achieve a commercial gain. Complainant avers that Respondent seeks to mask itself as the owner of the NEWPORT mark, thus luring Internet users into believing they were engaged in legitimate business transactions with Complainant. The Panel again notes that the <newportcigarettes.net> domain name is being used to promote the sale of “duty free” NEWPORT products. See Complainant’s Ex. 2. Previous panels have concluded that a respondent’s intent to confuse Internet users can be made apparent by the fact that the respondent is using a confusingly similar domain name to sell the complainant’s own products. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Therefore the Panel concludes that Respondent’s use and registration of the <newportcigarettes.net> domain name was intended to confuse Internet users into mistakenly believing Complainant ran or was affiliated with the domain name for Respondent’s own commercial benefit and that such conduct is bad faith under Policy ¶ 4(b)(iv).
Complainant finally contends that Respondent had to have actual or constructive knowledge of Complainant’s rights in the mark. Complainant bases this argument on the fact that Respondent registered the domain name 54 years after the original registration of the name, and the name is being used to sell NEWPORT brand products. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigarettes.net> domain name be TRANSFERRED from Respondent to Complainant
John J. Upchurch, Panelist
Dated: March 19, 2013
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