Lorillard Licensing Company, LLC v. Zhang Yangduo / Yangduo Zhang
Claim Number: FA1302001486858
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Zhang Yangduo / Yangduo Zhang (“Respondent”), Beijing, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettess.com>, registered with Bizcn.com.
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 February 25, 2013; the National Arbitration Forum received payment on February 25, 2013. The Complaint was submitted in both Chinese and English.
On February 25, 2013, Bizcn.com confirmed by e-mail to the National Arbitration Forum that the <newportcigarettess.com> domain name is registered with Bizcn.com and that Respondent is the current registrant of the name. Bizcn.com has verified that Respondent is bound by the Bizcn.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 March 5, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 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@newportcigarettess.com. Also on March 5, 2013, the Chinese language 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 April 8, 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.
i. Complainant has registered the NEWPORT trademark with United States Patent and Trademark Office (“USPTO”) numerous times (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978).
ii. Respondent registered the <newportcigarettess.com> domain name on February 25, 2012.
iii. The disputed domain name reproduces Complainant’s mark in its entirety, adding only the descriptive term “cigarettes” and an additional letter “s,” neither of which is sufficient to avoid a finding of confusing similarity.
i. Respondent is not commonly known by the disputed domain name. Respondent is not affiliated with Complainant nor authorized to use the mark.
ii. Respondent has not demonstrated a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent is using the disputed domain name for the unauthorized sale of cigarettes using Complainant’s NEWPORT marks.
i. Respondent is using the disputed domain name to disrupt Complainant’s business.
ii. Respondent is attempting to divert customers away from Complainant’s business to Respondents website for its own commercial gain by creating confusion with Complainant’s mark.
iii. Even if customers ultimately realize that there is no connection between the domain name and Complainant, there is nevertheless initial interest confusion.
iv. Respondent must have had actual or constructive notice of Complainant’s rights in the mark, given its fame and length of use.
1. Respondent’s <newportcigarettess.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportcigarettess.com> domain name.
3. Respondent registered or used the <newportcigarettess.com> 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 rights in the NEWPORT trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with USPTO (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978) for the purpose of selling cigarettes. See Complainant’s Annex 4. The Panel notes that previous panels have found that a complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Further, the Panel notes that UDRP precedent has established that a complainant does not need to own a trademark in the country of a respondent in order to establish rights in its mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has established rights in the NEWPORT mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.
Complainant contends that the <newportcigarettess.com> domain name is identical or confusingly similar to Complainant’s NEWPORT mark. Complainant notes that the disputed domain name contains the NEWPORT mark in its entirety, with only the addition of the descriptive term “cigarettes” and the letter “s.” The Panel notes that descriptive words which describe a complainant’s products have been found by prior panels to be insufficient to distinguish a disputed domain name from a Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also notes that past panels have found that adding the letter “s” to a mark does not sufficiently distinguish the trademark. See 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)). The Panel also notes that previous panels have found that the affixation of a generic top-level domain (“gTLD”) does not make the domain name distinctive. 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). Therefore the Panel concludes that Respondent’s <newportcigarettess.com> domain name is confusingly similar to Complainant’s NEWPORT mark within the meaning of 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 claims that Respondent is not commonly known by the <newportcigarettess.com> domain name and has not established rights or legitimate interests under Policy ¶ 4(c)(ii). Complainant notes that it is not affiliated with Respondent and has not authorized Respondent to use the NEWPORT mark. The Panel notes that the WHOIS record for the disputed domain name lists “Zhang Yangduo / Yangduo Zhang” as the registrant. Because nominally unsupportive WHOIS information and a lack of authorization from a complainant have been found by past panels to be strong evidence that a respondent is not commonly known by a domain name, the Panel here finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also asserts that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that the disputed domain name resolves to a website where Respondent operates an unauthorized online store to sell products identical to Complainant’s products. See Complainant Annex 2. The Panel notes that past panels have found the sale of a complainant’s products to be evidence that a respondent has not made a bona fide offering or a legitimate 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). Accordingly, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant notes that by diverting customers from Complainant’s legitimate business to a website selling unauthorized NEWPORT cigarettes, Respondent is disrupting Complainant’s business and is showing bad faith under Policy ¶ 4(b)(iii). The Panel notes that previous panels have found such a sale of Complainant’s products to indicate bad faith under Policy ¶ 4(b)(iii) as it is competitive disruption. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent registered and is using the <newportcigarettess.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is showing bad faith under Policy ¶ 4(b)(iv), by intentionally diverting customers for Respondent’s commercial gain by creating confusion with Complainant’s mark. Indeed, past panels have agreed that the use of a confusingly similar domain name to sell a complainant’s products is evidence of Policy ¶ 4(b)(iv) bad faith. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant also argues that even if users ultimately realize they are not at a legitimate website of Complainant’s, the initial interest confusion still demonstrates bad faith. Because past panels have found that initial interest confusion supports a finding of bad faith under Policy ¶ 4(a)(iii), the Panel here holds so as well. See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘<singaporeairlines.com>’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).
Finally Complainant argues that due to the fame and longevity of its NEWPORT mark, and the fact that Respondent is offering Complainant’s own products at the resolving website, Respondent must have had actual or constructive notice of Complainant’s rights in the NEWPORT mark. 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 may determine 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 <newportcigarettess.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 19, 2013
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