Lorillard Licensing Company, LLC v. Fashion Group Geneve / Linda Bjorvin
Claim Number: FA1302001486065
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Fashion Group Geneve / Linda Bjorvin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discountnewportcigarettes.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 20, 2013.
On February 20, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <discountnewportcigarettes.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@discountnewportcigarettes.com. Also on February 21, 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 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <discountnewportcigarettes.com> domain name, the domain name at issue, is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Lorillard Licensing Company, LLC, uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant is the third-largest tobacco company in the United States, and NEWPORT cigarettes are the number one selling menthol cigarette in the United States. Complainant also owns and operates a website at <www.newport-pleasure.com> which features additional information about its goods and services. Further, Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978).
Respondent’s <discountnewportcigarettes.com> domain name is identical to Complainant’s NEWPORT mark, as it reproduces the NEWPORT mark in its entirety. Respondent is in no way affiliated with Complainant. At no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain name website referring to Complainant’s goods or services. Currently, <discountnewportcigarettes.com> resolves to a website where Respondent operates an unauthorized store for Internet users to purchase products identical to the products Complainant offers. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <discountnewportcigarettes.com> to conduct an unauthorized sale of NEWPORT cigarettes amounts to use of the disputed domain name in bad faith. It is evident that Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name on September 3, 2011.
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, Lorillard Licensing Company, LLC, uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant owns and operates a website at <www.newport-pleasure.com> which features additional information about its goods and services. Complainant is the owner of trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978). The Panel notes that although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates and it is sufficient that Complainant can demonstrate a mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, Complainant’s trademark registrations with the USPTO are adequate to establish its rights in the NEWPORT mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <discountnewportcigarettes.com> domain name is identical to Complainant’s NEWPORT mark, as it reproduces the NEWPORT mark in its entirety. Respondent’s disputed domain name is simply a combination of Complainant’s NEWPORT mark, the goods that Complainant sells using the NEWPORT marks, and the descriptive word “discount.” Respondent’s addition of the descriptive terms “discount” and “cigarettes” does not distinguish Respondent’s domain name from Complainant’s 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). Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See 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.”). Thus, Respondent’s <discountnewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is in no way affiliated with Complainant. At no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain name website referring to Complainant’s goods or services. The WHOIS information identifies “Fashion Group Geneve / Linda Bjorvin” as the registrant of the disputed domain name. Accordingly, Respondent is not commonly known by 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).
The <discountnewportcigarettes.com> domain currently resolves to a website where Respondent operates an unauthorized store for Internet users to purchase products identical to the products Complainant offers. Respondent uses the disputed domain name to host a website that sells Complainant’s cigarettes and the cigarettes of Complainant’s competitors. Respondent’s use of the disputed domain name to host a commercial website selling Complainant’s products and the products of Complainant’s competitors is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <discountnewportcigarettes.com> to conduct an unauthorized sale of NEWPORT cigarettes amounts to use of the disputed domain name in bad faith. Respondent uses the disputed domain name to host a website that sells Complainant’s cigarettes and the cigarettes of Complainant’s competitors. Respondent’s use of the disputed domain name to divert customers away from Complainant’s business to sell Complainant’s products or the products of Complainant’s competitors demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). 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).
It is evident that Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2011. The only logical reason Respondent registered the <discountnewportcigarettes.com> was because the name contained Complainant’s famous NEWPORT mark. While some 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 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discountnewportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 29, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page