Lorillard Licensing Company, LLC v. N/A / Garanichev Maxim
Claim Number: FA1304001497165
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is N/A / Garanichev Maxim (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigarettesnewport.net>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.
On May 2, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail message addressed to the National Arbitration Forum that the domain name <cigarettesnewport.net> is registered with PDR LTD. d/b/a PUBLICDO-MAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@cigarettesnewport.net. Also on May 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant uses its NEWPORT marks in connection with the marketing of cigarettes and related goods and services.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the NEWPORT trademark (including Registry No. 1,108,876, registered Dec. 12, 1978).
Respondent registered the contested <cigarettesnewport.net> domain name on January 15, 2013.
The domain name is confusingly similar to Complainant’s NEWPORT mark.
Respondent is in no way affiliated with Complainant.
Respondent has never sought or obtained from Complainant permission to use its NEWPORT mark.
The disputed domain name resolves to a website at which Respondent operates an unauthorized online store for Internet users to purchase products in competi-tion with those Complainant offers.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses Complainant’s mark in its domain name to mislead and divert customers away from Complainant’s legitimate business.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in its NEWPORT trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. 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).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that under the Policy it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <cigarettesnewport.net> domain name is confus-ingly similar to Complainant’s NEWPORT trademark. The domain name con-tains the entire NEWPORT mark, with the addition only of the term “cigarettes,” which describes Complainant’s business, and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, are insufficient to save it from a finding of confusing similarity under the standards of the Policy. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name con-fusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trade-mark NOVELL”).
See also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007):
[T]he inclusion of the generic top-level domain ‘.com’ is inconse-quential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent is in no way affiliated with Complainant, and that Respondent has never sought or obtained from Complainant permission to use the mark NEWPORT. Moreover, the WHOIS information for the <cigarettesnewport.net> domain name identifies the registrant only as “N/A / Garanichev Maxim,” which does not resemble the domain name. On this record we conclude that Respond-ent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVEL-ERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as contemplated in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <cigarettesnewport.net> domain name resolves to a website at which Respondent operates, presumably for financial gain, an unauthorized online store for Internet users to purchase products in competition with those Complainant offers. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that the unauthorized use of a UDRP complainant’s mark in a domain name to sell that complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent uses the contested do-main name <cigarettesnewport.net>, which is confusingly similar to Complain-ant’s NEWPORT trademark, to mislead and divert customers away from Com-plainant’s own website, thus to conduct unauthorized sales of cigarettes in comp-etition with the business of Complainant. This is evidence of bad faith in the registration and use of the domain name as described in Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith under Policy ¶ 4(b)(iv) by registering the domain name <fossilwatch.com> and using it to sell various watch brands, including those of a UDRP complainant, where that respondent was not authorized to sell that complainant’s goods).
We are also convinced from the evidence that Respondent knew both of Com-plainant and its rights in the NEWPORT trademark when it registered the con-tested <cigarettesnewport.net> domain name. This stands as further proof of bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware” of a UDRP complainant's YAHOO! mark at the time of its domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <cigarettesnewport.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 19, 2013
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