national arbitration forum

 

DECISION

 

Lorillard Licensing Company, LLC v. Maxim Golanicev

Claim Number: FA1305001497790

PARTIES

Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA.  Respondent is Maxim Golanicev (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kent-cigarette.com>, registered with DOMAINCONTEXT, INC.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.

 

On May 4, 2013, DOMAINCONTEXT, INC. confirmed by e-mail to the National Arbitration Forum that the <kent-cigarette.com> 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 May 14, 2013, the Forum served the Complaint and all Annexes, including a 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@kent-cigarette.com.  Also on May 14, 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 June 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <kent-cigarette.com> domain name is confusingly similar to Complainant’s KENT mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <kent-cigarette.com> domain name.

 

3.    Respondent registered and used the <kent-cigarette.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for its KENT mark (e.g., Reg. No. 1,108,879, registered December 12, 1978), used for cigarettes.

 

Respondent registered the <kent-cigarette.com> domain name on October 17, 2012, and uses it to operate an unauthorized online store selling products identical to the products Complainant offers.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the KENT mark with the USPTO 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 Complainant contends that it is the third largest tobacco company in the United States.  The Panel notes that, although Respondent appears to reside in Ukraine, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country where Respondent resides, as long as it can demonstrate rights in the mark in some jurisdiction.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <kent-cigarette.com> domain name is simply a combination of Complainant’s KENT mark and the product Complainant sells using the KENT mark.  The Panel finds that Respondent’s addition of a descriptive term to the domain name does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).  The Panel finds that the addition of the gTLD “.com” to the disputed domain name is irrelevant under Policy ¶ 4(a)(i).  See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).  Therefore, the Panel finds that Respondent’s <kent-cigarette.com> domain name is confusingly similar to Complainant’s KENT mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that it has never licensed Respondent to use the KENT mark or authorized Respondent to post content about Complainant’s products on the <kent-cigarette.com> website.  Complainant contends that Respondent is not affiliated with Complainant.  The WHOIS information identifies “Maxim Golanicev” as the registrant of the disputed domain name, which is not similar to the disputed domain name.  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

 

Complainant argues that Respondent’s <kent-cigarette.com> resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to the products Complainant offers. The Panel notes that the disputed domain name resolves to a website that states “BUY KENT CIGARETTES ONLINE” across the top of the page.  Previous panels have determined that a respondent was not using the domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use where respondent used the domain name to sell complainant’s products. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).  Thus, the Panel finds that Respondent is not using the <kent-cigarette.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <kent-cigarette.com> to conduct the unauthorized sale of KENT cigarettes.  If the Panel finds that this constitutes bad faith pursuant to 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).

 

Complainant claims that Respondent must have had actual or constructive knowledge of Complainant’s rights in its KENT marks when Respondent registered the disputed domain name in 2012 because Respondent registered the disputed domain name nearly sixty years after Complainant began using its KENT mark, and thirty-four years after Complainant obtained its first registration of the KENT and Design trademark with the USPTO.  The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights, also due to Respondent’s sale of Complainant’s goods on its website.  This is further evidence of bad faith under Policy ¶ 4(a)(iii).  See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kent-cigarette.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Sandra J. Franklin, Panelist

Dated:  June 17, 2013

 

 

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