Lorillard Technologies, Inc. v. Elite Domains
Claim Number: FA1305001499685
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Elite Domains (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blu-cigs.info>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2013; the National Arbitration Forum received payment on May 14, 2013.
On May 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <blu-cigs.info> domain name are 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 May 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@blu-cigs.info. Also on May 17, 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use Complainant’s marks, or to register a domain name incorporating Complainant’s marks.
ii. Respondent has apparently used this disputed domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s marks.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <blu-cigs.info> in order to redirect customers to competitors of Complainant’s business amounts to use of the disputed domain name in bad faith.
ii. Respondent’s creation of confusion as to its affiliation with Complainant in order to realize a commercial gain evidences bad faith registration and use.
iii. Respondent must have had actual or constructive knowledge of Complainant’s rights in its marks when Respondent registered the disputed domain name in 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the supply of electronic cigarettes and related goods and services.
2. Complainant owns many United States and foreign trademark registrations for the trademark BLU ECIGS and many foreign registrations for the trademark BLU CIGS. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BLU ECIGS mark (Reg. No. 3,846,035, registered September 7, 2010) and a trademark registration with the Canadian Intellectual Property Office for the BLU CIGS mark (Reg.No.TMA805311 registered August 25, 2011) together with other international trademarks for BLU ECIGS and BLU CIGS. Complainant’s trademark rights to BLU ECIGS date back to the date of filing, namely March 17, 2009 and its trademark rights to BLU CIGS date back to the date of application, namely September 23, 2010. Complainant has also established common law trademark rights to BLU ECIGS dating back to its first use in commerce by Complainant, i.e. no later than May 1, 2009.
3. Respondent registered the disputed domain name on November 9, 2010.
4.Respondent has used this disputed domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s marks.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it uses the BLU CIGS and BLU ECIGS marks in connection with electronic cigarettes and related goods and services. Complainant contends that it owns many United States and foreign trademark registrations for the trademarks BLU CIGS and BLU ECIGS. Complainant submits and has adduced evidence that the Panel accepts that it is the owner of a trademark registration with the USPTO for the BLU ECIGS mark (Reg. No. 3,846,035, registered September 7, 2010). See Annex 5. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) , the panel found that “as the Complainant’s mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).” Complainant also submits and has adduced evidence that the Panel accepts that it is the owner of a trademark registration with the Canadian Intellectual Property Office for the BLU CIGS mark (Reg.No.TMA805311, registered August 25, 2011) together with other international trademarks for BLU ECIGS and BLU CIGS. The Panel also finds that Complainant has established common law trademark rights to BLU ECIGS dating back to its first use in commerce by Complainant, i.e. no later than May 1, 2009.
Therefore, the Panel determines that Complainant’s registration of the BLU ECIGS mark with the USPTO , the registration of the BLU CIGS mark , the registration of other international trademarks for BLU ECIGS and BLU CIGS and Complainant’s common law trademark rights to BLU ECIGS demonstrate its rights in the respective trademarks marks pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLU ECIGS or BLU CIGS marks. Complainant claims that the <blu-cigs.info> domain name is identical to Complainant’s registered BLU CIGS mark, as it reproduces that mark in its entirety. The Panel agrees with that submission and so finds. Complainant also alleges that the disputed domain name is confusingly similar to Complainant’s registered BLU ECIGS mark. The Panel agrees with that submission and so finds. The Panel also finds that the <blu-cigs.info> domain name The Panel notes that Respondent deletes the space in the trademarks and instead adds a hyphen, while also deleting the letter “E” from Complainant’s mark and affixing the “.info” gTLD. The Panel holds that Respondent’s use of a hyphen to replace the space in Complainant’s BLU ECIGS mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i) for the purposes of the finding that the domain name is, respectively, identical and confusingly similar to the trademarks. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Complainant also submits that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. The Panel agrees that Respondent’s addition of a gTLD does not negate identity or confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel notes that Respondent deletes the letter “e” from Complainant’s registered BLU ECIGS mark. The Panel finds that the omission of a letter from a mark does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel therefore finds that there is confusing similarity between Respondent’s <blu-cigs.info> domain name and Complainant’s BLU ECIGS mark and that Respondent’s <blu-cigs.info> domain name and Complainant’s BLU CIGS mark are identical under Policy ¶ 4(a)(i). The Panel also finds that the<blu-cigs.info> domain name is confusingly similar to Complainant’s common law BLU ECIGS trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a ) Respondent has chosen to take either Complainant’s BLU ECIGS mark or its BLU CIGS mark and to use it in its domain name, making no change to the BLU CIGS mark and only omitting the letter “E” from the BLU ECIGS trademark and in each case adding a hyphen;
(b) Respondent has then used the disputed domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s marks;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use Complainant’s BLU ECIGS and BLU CIGS marks, or to register a domain name incorporating Complainant’s marks as aforesaid. Complainant contends that at no time did Respondent ever seek or obtain a license from Complainant to use the marks or to post content on the disputed domain name website referring to Complainant’s goods or services. Complainant also asserts that Respondent has not attempted to file any trademark applications for the marks in connection with any goods and services. Prior panels have found that a respondent has failed to establish rights and legitimate interests where the respondent was not authorized to register domain names featuring complainant’s mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(e) Complainant contends that Respondent has apparently used this disputed domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s BLU ECIGS and BLU CIGS marks. Complainant argues that the <blu-cigs.info> domain name resolves to a website containing hyperlinks to a variety of competing third-party websites. The Panel notes that Respondent’s website contains links titled “Blu Air,” “Hotel Blu Roma,” “Buy Cigarettes,” and others. See Annex 2. The Panel notes that some of the hyperlinks located at Respondent’s domain name may be considered unrelated to Complainant’s business. Complainant claims that Respondent commercially benefits from these hyperlinks by receiving click-through fees. The Panel holds that Respondent’s use of the <blu-cigs.info> domain name to provide competing or unrelated hyperlinks for which Respondent receives click-through fees does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s intentional use of Complainant’s marks to mislead and divert customers away from Complainant’s legitimate business to <blu-cigs.info> in order to redirect customers to competitors of Complainant’s business amounts to use of the disputed domain name in bad faith. The Panel notes that some of the hyperlinks listed at Respondent’s <blu-cigs.info> domain name can be considered to be in direct competition with Complainant’s electronic cigarette business. The Panel notes that Respondent’s domain name resolves to a website listing the link “Buy Cigarettes.” See Annex 2. Complainant asserts that Respondent receives click-through revenue through providing these competing hyperlinks on its website at the disputed domain name. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that the disputed domain names resolved to websites that listed links to competitors of Complainant, which was evidence that Respondent intended to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii). As the Panel finds that Respondent is attempting to disrupt Complainant’s business, the Panel finds that Respondent has registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant alleges that Respondent’s creation of confusion as to its affiliation with Complainant in order to realize a commercial gain evidences bad faith registration and use. The Panel notes that Respondent is using the disputed domain name to provide competing and unrelated hyperlinks, such as “Buy Cigarettes,” “Bollino Blu,” and “Cordon Blu.” See Annex 2. Complainant contends that Internet users are likely to be confused by a similar domain name and attracted to the linked websites looking to purchase Complainant’s electronic cigarettes. The Panel finds that Respondent’s use of the <blu-cigs.info> domain name to host competing hyperlinks and hyperlinks unrelated to Complainant’s business for which Respondent commercially profits constitutes attraction for commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Thirdly, Complainant contends that the only reason Respondent registered the <blu-cigs.info> domain name was because the name contained Complainant’s BLU CIGS trademark. The Panel notes that Respondent’s disputed domain name provides hyperlinks to websites in direct competition with Complainant. Additionally, Complainant argues that Respondent registered the disputed domain name one year after Complainant began using its BLU CIGS mark and after Complainant obtained the first registration of its BLU CIGS marks. Complainant therefore claims that Respondent must have had actual or constructive knowledge of Complainant’s rights in its marks when Respondent registered the disputed domain name in 2010. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to provide competing hyperlinks, 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the marks and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression. In this regard, the Panel notes that the disputed domain name was registered on November 9, 2010, that Complainant’s registered trademark rights to BLU ECIGS commenced on March 17, 2009, its registered trademark rights to BLU CIGS commenced on September 23, 2010 and its common law trademark rights commenced on May 1, 2009.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blu-cigs.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 14, 2013
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