Lorillard Licensing Company, LLC v. Justin D. Garcia
Claim Number: FA1304001497210
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Justin D. Garcia (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestcheapnewportcigarettes.com>, registered with GoDaddy.com, LLC.
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 29, 2013; the National Arbitration Forum received payment on April 30, 2013.
On April 30, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bestcheapnewportcigarettes.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@bestcheapnewportcigarettes.com. Also on April 30, 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 28, 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.
A. Complainant
a. Complainant, Lorillard Licensing Company, LLC, uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant has used its NEWPORT mark since 1956 and is currently the third largest tobacco company in the United States.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978).
c. Respondent’s disputed domain name is simply a combination of Complainant’s NEWPORT mark and the descriptive terms “best,” “cheap,” and “cigarettes.”
d. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is in no way affiliated with Complainant, and has never sought to obtain a license from Complainant to use the NEWPORT mark or post content referring to Complainant’s goods at the resolving website.
ii. Respondent has used this disputed domain name for commercial gain to mislead and divert consumers in the unauthorized sale of cigarettes using Complainant’s NEWPORT marks.
e. Respondent registered and is currently using the disputed domain name in bad faith.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to the website found at the <bestcheapnewportcigarettes.com> domain name in order to conduct unauthorized sales of NEWPORT cigarettes amounts to use of the disputed domain name in bad faith.
ii. Clearly, the only reason Respondent registered <bestcheapnewportcigarettes.com> was because the name contained Complainant’s famous NEWPORT trademark.
f. Respondent registered the disputed domain name on March 14, 2013.
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 USA and foreign registrations for the NEWPORT mark. Complainant has continuously used its mark since at least 1978 in connection with cigarettes and related goods and services. Complainant also offers its products via the web at its <newport-pleasure.com> website.
Respondent is Justin D. Garcia whose address is listed as Manchester, MO, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on March 14, 2013.
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, Lorillard Licensing Company, LLC, contends that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services, and asserts that it is the owner of trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978). See Complainant’s Annex 5. The Panel notes that Respondent appears to reside within the United States. The Panel finds that Complainant’s registration of the NEWPORT mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s disputed domain name is simply a combination of Complainant’s NEWPORT mark and the descriptive terms “best,” “cheap,” and “cigarettes.” Complainant argues that the term “cigarettes” relates to Complainant’s business and the product that it sells using the NEWPORT mark, and the descriptive terms added to the domain name fail to distinguish the domain name from the mark. The Panel finds that Respondent’s addition of generic or descriptive terms to Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s mark pursuant to 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)). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel finds that Respondent’s addition of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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 inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel finds that Respondent’s <bestcheapnewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT marks pursuant to ¶ 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 contends that Respondent is in no way affiliated with Complainant. Complainant asserts 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 name website referring to Complainant’s goods or services. The Panel notes that the WHOIS information lists “Justin D. Garcia” as the registrant of the disputed domain name. See Complainant’s Annex 1. As a result of the WHOIS information, the Panel finds that Respondent is not commonly known by the <bestcheapnewportcigarettes.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent has apparently used this disputed domain name for commercial gain to mislead and divert consumers in the unauthorized sale of cigarettes using Complainant’s NEWPORT marks. Complainant argues that currently, the <bestcheapnewportcigarettes.com> domain name resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to the products Complainant offers. See Complainant’s Annex 2. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products is not considered 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).
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’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <bestcheapnewportcigarettes.com> to conduct an unauthorized sale of NEWPORT cigarettes amounts to use of the disputed domain name in bad faith. Complainant argues that currently, <bestcheapnewportcigarettes.com> resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase substantially similar products to those sold by Complainant. See Complainant’s Annex 2. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products shows Respondent registered and is using the domain name 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 <bestcheapnewportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 11, 2013
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