Lorillard Licensing Company, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1303001491876
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettesale.com>, registered with INTERNET.BS CORP.
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.
Tyrus R. Atkinson, Jr., 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 March 28, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettesale.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@newportcigarettesale.com. Also on March 29, 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 April 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <newportcigarettesale.com> domain name on March 12, 2012.
iii. The disputed domain name reproduces Complainant’s mark in its entirety, adding only the descriptive terms “cigarette” and “sale,” as well as the generic top-level domain (“gTLD”) “.com,” which are not 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 by displaying hyperlinks to competing third-party websites.
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 Respondent’s 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its NEWPORT mark.
2. Respondent’s <newportcigaretttesale.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used 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 Policy ¶ 4(a)(i) based on its registrations 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 <newportcigarettesale.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 terms “cigarettes” and “sale.” 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 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 <newportcigarettesale.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 <newportcigarettesale.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). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
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 displaying links to various third parties who compete with Complainant’s business. See Complainant Annex 2. Because past panels have found that the display of competing hyperlinks on a resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of a disputed domain name, this Panel alsos find that Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). 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).
Complainant claims that Respondent is using the disputed domain name to display links that promote products that compete with Complainant’s business. See Complainant Annex 2. Complainant claims this disrupts its business and is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel notes that previous panels have found the display of competing links 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 <newportcigarettesale.com> domain name in bad faith pursuant to 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 NEWPORT mark. The Panel agrees that Respondent is trying to profit by attracting users seeking Complainant’s website, and finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv), as past panels have done. 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 linking to 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. 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 <newportcigarettesale.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 13, 2013
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