Lorillard Licensing Company, LLC v. Li Shiyu / Fuzhou zhongtian baojianpin Co., Ltd.
Claim Number: FA1304001497251
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Li Shiyu / Fuzhou zhongtian baojianpin Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportssupplier.net>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
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.
Hon. Karl V. Fink (Ret.), 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. The Complaint was submitted in both English and Chinese.
On May 1, 2013, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <cheapnewportssupplier.net> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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@cheapnewportssupplier.net. 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 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. At no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT mark or to post content on the disputed domain name website referring to Complainant’s goods or services.
ii. Respondent’s <cheapnewportssupplier.net> resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to Complainant’s products.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <cheapnewportssupplier.net> to conduct an unauthorized sale of NEWPORT cigarettes is use of the domain name in bad faith.
ii. Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant alleges 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). Although Respondent appears to reside and operate in China, the Panel finds that Complainant does not need to register its NEWPORT mark in China, as Policy ¶ 4(a)(i) only requires that Complainant register its mark in some jurisdiction to demonstrate rights in the mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Thus, the Panel holds that Complainant has demonstrated rights in the NEWPORT mark through its registration with the USPTO pursuant to 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 asserts that Respondent’s <cheapnewportssupplier.net> domain name is simply a combination of Complainant’s NEWPORT mark, the letter “s,” and the descriptive terms “cheap” and “supplier.” The Panel determines that Respondent’s addition of the letter “s” and descriptive terms does not negate a finding of confusingly similarity under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Complainant also contends that the addition of the gTLD “.net” is irrelevant to a Policy ¶ 4(a)(i) determination. In Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005), the panel found that the addition of the gTLD “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark. Thus, the Panel finds that Respondent’s addition of a gTLD to the mark is inconsequential to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <cheapnewportssupplier.net> domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 mark or to post content on the disputed domain name website referring to Complainant’s goods or services. Complainant also asserts that Respondent has never attempted to file any trademark applications for the mark NEWPORT in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that the WHOIS information for the <cheapnewportssupplier.net> domain name indicates that “Li Shiyu / Fuzhou zhongtian baojianpin Co., Ltd.” is the registrant of the domain. Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name under 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 contends that Respondent’s <cheapnewportssupplier.net> resolves to a website where Respondent operates an unauthorized only store for Internet users to purchase products identical to Complainant’s products. Complainant claims that Respondent used the domain name for commercial gain to mislead and divert consumers in the unauthorized sale of cigarettes using Complainant’s NEWPORT marks. The Panel notes that Respondent’s <cheapnewportssupplier.net> domain name resolves to a website stating “Newports Cigarettes Cheap Newports Cigarettes Cheap Newports Supplied,” along the top of the page. The Panel notes that Respondent’s domain name also features hyperlinks to Complainant’s competitors, such as “Marlboro Red Cigarettes,” “Benson & Hedges,” “Camel Cigarettes,” and others. The Panel determines that Respondent’s domain name is not being used in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) where Respondent uses the domain to sell Complainant’s products and to display competing hyperlinks. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant asserts that Respondent’s intentional use of Complainant’s mark is meant to mislead and divert customers away from Complainant’s legitimate business to <cheapnewportssupplier.net> to conduct an unauthorized sale of NEWPORT cigarettes and is done in bad faith. The Panel notes that Respondent’s domain name also features hyperlinks to Complainant’s competitors, such as “Marlboro Lights (Gold pack),” “Dunhill Cigarettes,” “Camel Cigarettes,” and others. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products and to provide competing hyperlinks constitutes bad faith use and registration 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); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant contends that Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2012. Complainant asserts that Respondent registered the disputed domain name nearly fifty-six years after Complainant began using its NEWPORT mark, and forty-three years after Complainant obtained its first registration of 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, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cheapnewportssupplier.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 12, 2013
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