Lorillard Licensing Company, LLC v. Legal Admin
Claim Number: FA1302001486857
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Legal Admin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received payment on February 25, 2013.
On February 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has 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 February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@newportcigarette.net, postmaster@newport-cigarettes.net, postmaster@newportcigaretteswebsite.biz, postmaster@newportcigaretteswebsite.org, postmaster@newportcigaretteswholesale.biz, postmaster@newportcigaretteswholesale.com. Also on February 26, 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 Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names are confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names.
3. Respondent registered and used the <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant began using its NEWPORT marks in 1956 in connection with the sale of cigarettes, and owns several trademark registrations with the U.S. Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 871,160, issued June 17, 1969).
Respondent registered the disputed domain names in December 2010 and January 2011, and uses them to display hyperlinks to competing third parties.
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.”).
The Panel finds that Complainant has established rights in its NEWPORT marks through its trademark registrations with the U.S. Patent and Trademark Office (“USPTO”). 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.”).
Respondent’s <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names are confusingly similar to Complainant’s NEWPORT mark, as they simply add the generic words “cigarette(s),” “website” or “wholesale” to the mark. Generic words do not distinguish the disputed domain names, particularly since the word “cigarettes” describes the product Complainant sells under its NEWPORT mark, and the other words pertain to Complainant’s channels of trade. Respondent also adds a gTLD to all of the disputed domain names, and a hyphen to one of them, which are insignificant in this analysis. Therefore, the Panel finds that Respondent failed to distinguish the disputed domain names from Complainant’s NEWPORT mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant); see also Am. Online Inc. v. Neticq.com Ltd., WIPO Case No. D2000-1606 (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that Respondent is not affiliated with Complainant or licensed to use the NEWPORT mark. The WHOIS information for the disputed domain names lists “Legal Admin” as the registrant, which is not similar to the disputed domain names. Therefore, the Panel finds that Respondent has not been commonly known by the disputed domain names and has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also contends that Respondent is not making 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). Complainant states that the disputed domain names divert Internet users to Respondent’s websites featuring hyperlinks to competing third party websites, presumably for Respondent’s commercial benefit. Previous panels have found that diverting Internet users to the respondent’s website is not a bona fide offering or a legitimate noncommercial or fair use. See 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); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not 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).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in the <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the disputed domain names to divert Internet users to third party websites in order to generate revenue for Respondent, taking advantage of Complainant’s well-known NEWPORT mark and achieving a wrongful competitive advantage. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”);
Respondent’s diversion of potential customers away from Complainant to third party websites disrupts Complainant’s business, and also demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel held that the display of competitive links on a disputed domain name is disruptive to the complainant’s business.
Complainant argues that Respondent had actual or at least constructive knowledge of Complainant’s rights in the NEWPORT mark when it registered the disputed domain names, based on Complainant’s long use of the mark and its trademark registrations. The Panel would add that the Respondent’s use of the NEWPORT mark for competing cigarette sales indicate that Respondent knew of Complainant’s rights, a further indication of bad faith. See 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 Complainant has satisfied 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 <newportcigarette.net>, <newport-cigarettes.net>, <newportcigaretteswebsite.biz>, <newportcigaretteswebsite.org>, <newportcigaretteswholesale.biz>, and <newportcigaretteswholesale.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page