Lorillard Licensing Company, LLC v. Liu Yuan / Yuan Liu
Claim Number: FA1305001500475
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Liu Yuan / Yuan Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportcigarettes2013.com>, registered with BIZCN.COM, INC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2013; the National Arbitration Forum received payment on May 17, 2013. The Complaint was submitted in English and Chinese.
On May 19, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcigarettes2013.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, 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 28, 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 17, 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@cheapnewportcigarettes2013.com. Also on May 28, 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. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
i. 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.
ii. Respondent’s <cheapnewportcigarettes2013.com> forwards to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to the products Complainant offers.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <cheapnewportcigarettes2013.com> to conduct an unauthorized sale of NEWPORT cigarettes amounts to bad faith registration and use of the disputed domain name.
ii. It is evident 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 contends that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant argues that it is the third largest tobacco company in the United States. Complainant claims that it owns many trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978). The Panel notes that Respondent appears to reside in China. In KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001), the panel held 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. Therefore, the Panel finds that it does not matter that Complainant has not registered its NEWPORT mark with China’s trademark agency under Policy ¶ 4(a)(i), and Complainant’s registration of the NEWPORT mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <cheapnewportcigarettes2013.com> domain name is simply a combination of Complainant’s NEWPORT mark, the goods that Complainant sells using the NEWPORT marks, the descriptive term “cheap,” and the current year “2013.” The Panel notes that Respondent’s addition of the terms “cheap” and “cigarettes” is descriptive of the sale of Complainant’s products. The Panel finds that Respondent’s addition of generic terms does not negate confusing similarity under 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 holds that Respondent’s addition of the current year does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). Thus, the Panel concludes that Respondent’s <cheapnewportcigarettes2013.com> domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use or to register a domain name incorporating Complainant’s NEWPORT marks. 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, nor did Respondent attempt to file any trademark applications for the NEWPORT mark in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that the WHOIS information indicates that “Liu Yuan / Yuan Liu” is the registrant of the <cheapnewportcigarettes2013.com> domain name. The Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as Respondent has not received authorization to use the NEWPORT mark from Complainant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s <cheapnewportcigarettes2013.com> forwards 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 Respondent’s domain name resolves to a commercial website where Internet users can purchase Complainant’s NEWPORT goods. As Respondent is apparently using the domain name without authorization to sell Complainant’s goods, the Panel finds that Respondent is not using the disputed domain name in connection with 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); see also Herbalife Int’l of Am., Inc. v. (FAST – 12785240) Blue Host.com Bluehost Inc, FA 1408481 (Nat. Arb. Forum Nov. 1, 2011) (“Respondent’s disputed domain name resolves to a website where Respondent operates an online store which sells Complainant’s products. Complainant claims that Respondent is not an authorized distributor of Complainant’s goods … . The Panel finds that Respondent’s use of the confusingly similar disputed domain name to sell unauthorized goods of Complainant, in direct competition with Complainant, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent intentionally uses Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to the <cheapnewportcigarettes2013.com> domain name to conduct unauthorized sales of NEWPORT products. The Panel notes that Respondent’s domain name is used in connection with a website purporting to sell NEWPORT-brand cigarettes. The Panel notes that Complainant submits evidence showing a screenshot of Respondent’s website, which appears to sell Complainant’s cigarettes. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products disrupts Complainant’s legitimate business, showing bad faith use and registration of the domain name under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant claims that Respondent’s intentional use of Complainant’s mark to conduct unauthorized sales of NEWPORT cigarettes amounts to use of the disputed domain name in bad faith. The Panel notes that Respondent’s <cheapnewportcigarettes2013.com> domain name links to a website that offers cigarettes for sale that appear to be Complainant’s products. Respondent’s use of a disputed domain name where Respondent sells Complainant’s products, and presumably commercially profits, demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
Complainant asserts that it is evident that Respondent must have had actual knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2012. Complainant claims that Respondent registered the disputed domain name many decades after Complainant obtained its first registration of its NEWPORT mark with the USPTO. The Panel infers that, in light of Respondent’s sale of Complainant’s products through its disputed domain name, Respondent had actual knowledge of Complainant’s mark. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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”.).
Thus, Complainant has also satisfied 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 <cheapnewportcigarettes2013.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 5, 2013
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