Lorillard Licensing Company, LLC v. GERARD BUTLER
Claim Number: FA1303001491864
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP, California, USA. Respondent is GERARD BUTLER (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettes.info>, registered with Online SAS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2013; the National Arbitration Forum received payment on March 27, 2013.
On April 5, 2013, Online SAS confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes.info> domain name is registered with Online SAS and that Respondent is the current registrant of the name. Online SAS has verified that Respondent is bound by the Online SAS 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 April 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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.info. Also on April 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 May 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEWPORT mark. Respondent’s domain name is confusingly similar to Complainant’s NEWPORT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <newportcigarettes.info> domain name, and that Respondent registered and uses the 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 its registrations of the mark with the USPTO (e.g. Reg. No. 1,108,876 registered Dec. 12, 1978) for the sale and promotion of cigarettes. Registration with the USPTO is sufficient to establish rights in a mark. 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.”). Under UDRP precedent, a complainant need not register a mark in the country of a respondent to establish rights in that country. 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). Therefore the Panel holds that Complainant has established rights in the NEWPORT mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <newportcigarettes.info> domain name is identical or confusingly similar to Complainant’s NEWPORT mark. The disputed domain name contains the NEWPORT mark in its entirety, with only the addition of the descriptive term “cigarettes.” Descriptive words which describe a complainant’s products are 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). Furthermore, the affixation of a generic top-level domain (“gTLD”) such as “.info” 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 <newportcigarettes.info> domain name is confusingly similar to Complainant’s NEWPORT mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent is not commonly known by the <newportcigarettes.info> 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 WHOIS record for the disputed domain name lists “GERARD BUTLER” as the registrant. Nominally unsupportive WHOIS information and a lack of authorization from a complainant are strong evidence that a respondent is not commonly known by a domain name; accordingly, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
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 a personal blog promoting NEWPORT cigarettes and containing hyperlinks to a variety of competing third-party websites. The display of links to competing websites is evidence that a respondent has not made a bona fide offering or a legitimate use. Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is using the <newportcigarettes.info> domain name to redirect customers to competitors of Complainant’s business. Complainant claims this disrupts its business and is evidence of bad faith under Policy ¶ 4(b)(iii). The display of competing links has been found to constitute disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also asserts bad faith under Policy ¶ 4(b)(iv), claiming that Respondent is intentionally diverting customers from Complainant’s business by creating confusing with Complainant’s NEWPORT mark for Respondent’s own commercial gain. The Panel agrees that Respondent is trying to profit by attracting users seeking Complainant’s website, and therefore finds that Respondent has demonstrated bad faith registration and use 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).
Finally Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the NEWPORT mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website, as well as Complainant’s decades-long use and registration of the mark, indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and 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").
The Panel finds 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 <newportcigarettes.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 14, 2013
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