Lorillard Licensing Company, LLC v. xinye
Claim Number: FA1304001495048
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP (US), California, USA. Respondent is xinye (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <topnewportmall.com> and <newportsupplier.com>, registered with Xin Net Technology Corporation.
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 April 16, 2013; the National Arbitration Forum received payment on April 16, 2013. The Complaint was submitted in both English and Chinese.
On May 1, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <topnewportmall.com> and <newportsupplier.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 May 13, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 3, 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@topnewportmall.com, postmaster@newportsupplier.com. Also on May 13, 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 June 12, 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 names be transferred from Respondent to Complainant.
i. At no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain names websites referring to Complainant’s goods or services.
ii. Respondent’s <topnewportmall.com> and <newportsupplier.com> domain names resolve to websites where Respondent operates unauthorized online stores for Internet users to purchase products identical to the products Complainant offers.
i. Respondent is intentionally using Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <topnewportmall.com> and <newportsupplier.com> to conduct unauthorized sales of NEWPORT cigarette.
ii. Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain names in 2012.
1. Respondent’s <topnewportmall.com> and <newportsupplier.com> domain names are confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <topnewportmall.com> and <newportsupplier.com> domain names.
3. Respondent registered or used the <topnewportmall.com> and <newportsupplier.com> domain names 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 argues that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant contends that it is the owner of trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 871,160, registered June 17, 1969). See Annex 5. Complainant claims that it also owns trademark registrations for the NEWPORT mark with several other countries. See Annex 6. The Panel notes that while Complainant does not own a registration for the NEWPORT mark within the country of Respondent’s residence, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it establishes rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes that Complainant’s registration of the NEWPORT mark with the USPTO demonstrates rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the disputed domain name <topnewportmall.com> fully incorporates Complainant’s NEWPORT mark and adds the generic terms “top” and “mall” to the mark. Complainant contends that Respondent’s <newportsupplier.com> uses Complainant’s NEWPORT mark and the descriptive word “supplier” to attract business to the website. The Panel holds that Respondent’s addition of generic or descriptive terms to Complainant’s NEWPORT mark does not deter the Panel from finding confusing similarity under Policy ¶ 4(a)(i). See 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)). Finally, Complainant asserts that the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) determination. The Panel agrees that Respondent’s addition of a gTLD to the disputed domain names is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <topnewportmall.com> and <newportsupplier.com> domain names are confusingly similar to Complainant’s NEWPORT mark pursuant to 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 alleges that at no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain names websites referring to Complainant’s goods or services. Complainant claims that Respondent is in no way affiliated with Complainant. Complainant asserts that Respondent has not attempted to file any trademark applications for the NEWPORT mark in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that “xinye” is identified as the registrant of the <topnewportmall.com> and <newportsupplier.com> domain names in the WHOIS record. See Annex 1. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that 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. Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <topnewportmall.com> and <newportsupplier.com> domain names resolve to websites where Respondent operates unauthorized online stores for Internet users to purchase products identical to the products Complainant offers. The Panel notes that Respondent’s <topnewportmall.com> and <newportsupplier.com> domain names resolve to a website that appears to sell Complainant’s products and the products of Complainant’s competitors. See Annex 2. Therefore, the Panel determines that Respondent’s use of the disputed domain names to sell Complainant’s products and competing products is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent is intentionally using Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <topnewportmall.com> and <newportsupplier.com> to conduct unauthorized sales of NEWPORT cigarettes. The Panel notes that Respondent’s website sells Complainant’s products, as well as the products of Complainant’ s competitors, such as “Marlboro” and “Golden Virginia.” See Annex 2. In G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panel determined that respondent’s unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represented bad faith use under Policy ¶ 4(b)(iii). Consequently, the Panel finds that Respondent’s sale of Complainant’s products on its disputed domain sites disrupts Complainant’s business and demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent’s use of Complainant’s mark to divert consumers to Respondent’s sites, where Respondent generates a commercial gain, demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv). The Panel reasons that Respondent’s selection of confusingly similar domain names was calculated to create confusion as to Complainant’s endorsement of or affiliation with Respondent’s websites, and that Respondent hoped that such confusion would draw additional traffic to its sites, in turn resulting in additional revenues from the unauthorized sale of NEWPORT-branded cigarettes. Accordingly, the Panel finds that Respondent’s business model evidences attraction for commercial gain, which the Panel finds to constitute bad faith registration and use of the <topnewportmall.com> and <newportsupplier.com> domain names under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain names in 2012. Complainant contends that Respondent registered the disputed domain names nearly fifty-six years after Complainant began using its NEWPORT mark, and forty-three years after Complainant obtained its first registration of the NEWPORT and Design trademark with the USPTO. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s sale of Complainant’s products on its websites, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <topnewportmall.com> and <newportsupplier.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 25, 2013
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