Lorillard Licensing Company, LLC v. Valery Odin / N/A
Claim Number: FA1304001493868
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Valery Odin / N/A (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newporttaxfreecigarettesstore.org>, registered with DomainContext, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2013; the National Arbitration Forum received payment on April 9, 2013.
On April 11, 2013, DomainContext, Inc. confirmed by e-mail to the National Arbitration Forum that the <newporttaxfreecigarettesstore.org> domain name is registered with DomainContext, Inc. and that Respondent is the current registrant of the name. DomainContext, Inc. has verified that Respondent is bound by the DomainContext, Inc. 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@newporttaxfreecigarettesstore.org. Also on April 16, 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 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant
A. Complainant has rights in the NEWPORT mark, under which it markets its brand of cigarettes and related goods and services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978).
B. The <newporttaxfreecigarettesstore.org> domain name is identical or confusingly similar the NEWPORT mark. Respondent uses the NEWPORT mark in its entirety and adds the following: the descriptive term “cigarettes,” the generic top-level domain (“gTLD”) “.com,” and the generic terms “tax,” “free,” and “store.” These changes do not distinguish the disputed domain name from the NEWPORT mark.
C. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is in no way affiliated with Complainant, has not sought to obtain a license to use the NEWPORT mark, and has not attempted to register a trademark reflecting the elements of the <newporttaxfreecigarettesstore.org> domain name.
b. The <newporttaxfreecigarettesstore.org> domain name resolves to a website where Respondent sells products identical to those that Complainant offers.
D. Respondent registered and is using the <newporttaxfreecigarettesstore.org> domain name in bad faith.
a. Respondent uses the disputed domain for commercial gain to mislead and divert consumers in the unauthorized sale of Complainant’s NEWPORT-branded cigarettes. Respondent drives potential customers of Complainant to Respondent’s own website, which sells identical products. This is disruptive to Complainant’s business.
b. Respondent is merely trading off the goodwill created by Complainant for the NEWPORT mark. Respondent attempts to confuse customers into visiting a website that is unaffiliated with Complainant to make unauthorized sales of Complainant’s products.
c. Respondent must have had constructive or actual knowledge of Complainant’s rights in the NEWPORT mark at the time Respondent registered the <newporttaxfreecigarettesstore.org> domain name. Respondent only registered the <newporttaxfreecigarettesstore.org> domain name because of its incorporation of the NEWPORT mark as Respondent proceeded to sell Complainant’s products to Internet users. Additionally, Respondent registered the disputed domain name 55 years after Complainant began using the NEWPORT mark and many years after the registration of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Lorillard Licensing Company, LLC who list its address as Greensboro, NC, USA. Complainant owns several domestic and international trademark registrations for the marks NEWPORT and NEWPORT CIGARETTES as well as related marks in the NEWPORT family. Complainant also owns and operates a website at <newport-pleasure.com> featuring additional information on its goods and services.
The Respondent is Valery Odin whose address is listed as Moscow, Russia. Respondent’s registrar’s address is listed as Wilmington, DE, USA. Respondent registered the <newporttaxfreecigarettesstore.org> domain name on October 20, 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 contends that it has rights in the NEWPORT mark, under which it markets its brand of cigarettes and related goods and services. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registration for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978). Panels have found that registering a mark with a federal trademark authority is sufficient evidence of a complainant’s rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Panels have elaborated on this and found that registration of a mark satisfies the requirements of Policy ¶ 4(a)(i) regardless of the location of the respondent. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has rights in the NEWPORT mark.
Complainant argues that the <newporttaxfreecigarettesstore.org> domain name is identical or confusingly similar to the NEWPORT mark. Complainant notes that Respondent uses the NEWPORT mark in its entirety and adds the following: the descriptive term “cigarettes,” the gTLD “.com,” and the generic terms “tax,” “free,” and “store.” These changes do not distinguish the disputed domain name from the NEWPORT mark, Complainant claims. The Panel notes that Complainant’s assertions reflect the holdings of prior panels. 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); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <newporttaxfreecigarettesstore.org> domain name is confusingly similar to the NEWPORT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is in no way affiliated with Complainant, has not sought to obtain a license to use the NEWPORT mark, and has not attempted to register a trademark reflecting the elements of the <newporttaxfreecigarettesstore.org> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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. The Panel finds that Respondent is not commonly known by the <newporttaxfreecigarettesstore.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that the <newporttaxfreecigarettesstore.org> domain name resolves to a website where Respondent sells products identical to those that Complainant offers. Panels have previously held that rights and legitimate interests are not granted based on the unauthorized sale of a Complainant’s products on a disputed domain name. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). The Panel finds that Respondent’s use of the <newporttaxfreecigarettesstore.org> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the <newporttaxfreecigarettesstore.org> domain name in bad faith. Complainant contends that Respondent uses the disputed domain for commercial gain to mislead and divert consumers in the unauthorized sale of Complainant’s NEWPORT-branded cigarettes. Complainant asserts that Respondent drives potential customers of Complainant to Respondent’s own website selling identical products. In Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panel ordered the transfer of the disputed domain name from the respondent who was selling, but not authorized to sell, the complainant’s goods. The Panel finds that Respondent’s registration and use of the <newporttaxfreecigarettesstore.org> domain name is disruptive, demonstrates bad faith, and justifies the transfer of the domain name to Complainant pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent is merely trading off the goodwill created by Complainant for the NEWPORT mark. Complainant asserts that Respondent attempts to confuse customers into visiting a website that is unaffiliated with Complainant to make unauthorized sales of Complainant’s products. The Panel finds any attempts by Respondent to take commercial advantage of Internet users by creating a likelihood of confusion as to the <newporttaxfreecigarettesstore.org> domain name’s association with the NEWPORT mark to be in bad faith 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <newporttaxfreecigarettesstore.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 28, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page