Lorillard Licensing Company, LLC v Liu Shan / Shan Liu
Claim Number: FA1305001500473
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Liu Shan / Shan Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportcigarettess.net>, registered with Bizcn.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 17, 2013; the National Arbitration Forum received payment May 17, 2013. The Complaint was submitted in both English and Chinese.
On May 19, 2013, Bizcn.com confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcigarettess.net> domain name is registered with Bizcn.com and that Respondent is the current registrant of the name. Bizcn.com verified that Respondent is bound by the Bizcn.com registration agreement and 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 29, 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 18, 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@cheapnewportcigarettess.net. Also on May 29, 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant is the owner of the NEWPORT mark.
a. The mark is used in connection with cigarettes and related goods and services.
b. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) trademark registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Annex 5.
b) The <cheapnewportcigarettess.net> domain name is confusingly similar to the NEWPORT mark.
a. The domain name reproduces the NEWPORT mark in its entirety.
b. The term “cigarettess,” a slight misspelling of Complainant’s product is attached to the NEWPORT mark along with the generic term “cheap.” Both added terms are used to draw in Complainant’s consumers by creating a confusingly similar domain name.
c. The generic top-level domain (“gTLD”) “.net” is also included, but this is a minor, irrelevant change.
c) Respondent has no rights to or legitimate interests in the <cheapnewportcigarettess.net> domain name.
a. Respondent is in no way affiliated with Complainant, has never sought to obtain a license from Complainant to use the NEWPORT mark, and has never made any attempt to acquire rights in a trademark reflected by the <cheapnewportcigarettess.net> domain name.
b. Respondent uses the <cheapnewportcigarettess.net> domain name to host an online store that makes unauthorized sales of Complainant’s products.
d) Respondent registered and is using the <cheapnewportcigarettess.net> domain name in bad faith.
a. Respondent’s bad faith is demonstrated under Policy ¶ 4(b)(iii). The <cheapnewportcigarettess.net> domain name is used to divert customers and mislead them so that Respondent may make unauthorized sales of Complainant’s products.
b. Respondent’s bad faith is similarly evidenced under Policy ¶ 4(b)(iv). Respondent is merely attempting to trade off of the goodwill Complainant created in the NEWPORT mark. Respondent seeks to confuse consumers into visiting a website that is unaffiliated with Complainant and the NEWPORT mark, even if the customer ultimately realizes that no connection exists. Respondent’s scheme allows it to make unauthorized sales of Complainant’s products, thus commercially benefitting.
c. Respondent registered the disputed domain name particularly because it incorporated the NEWPORT mark. Respondent registered the <cheapnewportcigarettess.net> domain name December 4, 2012, fifty-six years after Complainant began using the mark and forty-three years after Complainant obtained its first NEWPORT trademark registration. It is clear, therefore, that Respondent had actual and constructive knowledge of Complainant’s rights in the NEWPORT mark.
Respondent did not submit a Response.
a) The Panel notes that Respondent registered the <cheapnewportcigarettess.net> domain name December 4, 2012.
Language of the Proceedings:
The Panel notes that the Registration Agreement is written in Chinese, thereby the language of the proceedings is Chinese. The Panel notes as follows after review of the applicable rules on language of the proceedings under the UDRP:
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 may be conducted in English.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
The Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar:
Complainant contends that it is the owner of the NEWPORT mark. Complainant asserts that the mark is used in connection with cigarettes and related goods and services. Complainant demonstrates to the Panel that Complainant is the owner of USPTO trademark registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Annex 5. Panels have determined that the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The required showing of rights under Policy ¶ 4(a)(i) is satisfied by showing trademark registrations, whether or not those registrations are filed in the country where the respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the NEWPORT mark pursuant to Policy ¶ 4(a)(i).
The Panel also finds that Complainant’s assertion that the <cheapnewportcigarettess.net> domain name is confusingly similar to the NEWPORT mark is supported by evidence that the domain name reproduces the NEWPORT mark in its entirety. Additionally, Complainant claims that the term “cigarettess,” a slight misspelling of Complainant’s type of product, is attached to the NEWPORT mark along with the generic term “cheap,” and that both of these added terms are used to draw in Complainant’s consumers by creating a confusingly similar domain name. Finally, Complainant notes that the gTLD “.net” is also included, but argues that this is a minor, irrelevant change. Reproduction of a mark in a domain name along with generic and descriptive terms is not a change that distinguishes the domain name; it is confusingly similar. 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)). Further, addition of a gTLD, a necessary component of all domain names, is irrelevant; the domain name remains confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <cheapnewportcigarettess.net> domain name is confusingly similar to the NEWPORT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 claims that Respondent has no rights to or legitimate interests in the <cheapnewportcigarettess.net> domain name. Complainant argues that Respondent is in no way affiliated with Complainant, has never sought to obtain a license from Complainant to use the NEWPORT mark, and has never made any attempt to acquire rights in a trademark reflected by the <cheapnewportcigarettess.net> domain name. The Panel notes that the WHOIS record for the <cheapnewportcigarettess.net> domain name lists “Liu Shan / Shan Liu” as the domain name registrant. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that the WHOIS record and other available information is illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <cheapnewportcigarettess.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <cheapnewportcigarettess.net> domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <cheapnewportcigarettess.net> domain name to host an online store that makes unauthorized sales of Complainant’s products. See Complainant’s Annex 2. The Panel finds that Respondent’s sale of Complainant’s products without authorization is not a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. In fact, it demonstrates a lack of rights and legitimate interests. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent registered and is using the <cheapnewportcigarettess.net> domain name in bad faith. Complainant claims that Respondent’s bad faith is demonstrated under Policy ¶ 4(b)(iii). According to Complainant, the <cheapnewportcigarettess.net> domain name is used to divert customers and mislead them so that Respondent may make unauthorized sales of Complainant’s products. In Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panel held that the unauthorized sale of a complainant’s products using a confusingly similar domain name has a disruptive impact on the complainant’s business. Therefore, this Panel finds that Respondent’s registration and use of the <cheapnewportcigarettess.net> domain name disrupts Complainant’s business under a Policy ¶ 4(b)(iii) analysis.
Complainant next alleges that Respondent’s bad faith also is shown using a Policy ¶ 4(b)(iv) analysis. Complainant argues that Respondent is merely attempting to trade off of the goodwill created by Complainant in the NEWPORT mark so that Respondent is able to confuse consumers into visiting a website that is unaffiliated with Complainant and the NEWPORT mark, even if the customer ultimately realizes that no connection exists with either. Respondent’s scheme allows it to make unauthorized sales of Complainant’s products, thus commercially benefitting, Complainant asserts. The Panel finds that Respondent’s registration and use are part of a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Lastly, Complainant contends that Respondent registered the disputed domain name particularly because it incorporated the NEWPORT mark. Complainant argues that Respondent registered the <cheapnewportcigarettess.net> domain name December 4, 2012, fifty-six years after Complainant began using the mark and forty-three years after Complainant obtained its first NEWPORT trademark registration. Complainant claims that it is clear, therefore, that Respondent had actual and constructive knowledge of Complainant’s rights in the NEWPORT mark. Although constructive notice is not sufficient to support findings of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered and is using the disputed domain name in 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").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapnewportcigarettess.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 9, 2013.
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