Lorillard Licensing Company, LLC v. Liu Fang / Fang Liu
Claim Number: FA1305001500477
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Liu Fang / Fang Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportscigarettes.net>, 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.
Bruce E. Meyerson 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 both English and Chinese
On May 19, 2013, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheapnewportscigarettes.net> 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 Chinese language the 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@cheapnewportscigarettes.net. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the Lorillard Licensing Company, and it owns the NEWPORT trademark. Complainant started using this mark in 1956 to promote and sell cigarettes and other related tobacco goods and services.
2. Complainant has established rights in the NEWPORT mark through United States Patent & Trademark Office (“USPTO”) trademark registrations. See Reg. No. 2,600,870 registered on July 30, 2002); Reg. No. 1,108,876 registered on Dec. 12, 1978.
3. Respondent registered the <cheapnewportscigarettes.net> domain name. Respondent has simply made the NEWPORT mark into its plural form, added the mark-specific term “cigarettes,” and the generic term “cheap.” The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant.
4. Complainant also argues that Respondent is without rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), as Respondent is simply not affiliated with Complainant in any way.
5. Respondent has not made any bona fide offering of goods or services in connection with this domain name. Respondent has employed the <cheapnewportscigarettes.net> domain name in furtherance of his online store in competition with Complainant.
6. Respondent is using the NEWPORT mark in the domain name so as to confuse consumers into visiting the domain name’s website, thus increasing the chance that these users will assume the goods sold therein are somehow affiliated with Complainant. Respondent must have had actual or constructive knowledge of Complainant’s rights in the NEWPORT mark, as Complainant has had trademark registrations for this mark for many years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEWPORT mark. Respondent’s domain name is confusingly similar to Complainant’s NEWPORT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cheapnewportscigarettes.net> domain name, and that Respondent registered and uses the 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 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 owns the NEWPORT trademark. Complainant asserts that it has established rights in the NEWPORT mark through USPTO trademark registrations. (Reg. No. 2,600,870 registered on July 30, 2002); Reg. No. 1,108,876 registered on Dec. 12, 1978. USPTO trademark registrations are sufficient evidence of Complainant’s rights under Policy ¶ 4(a)(i), even if Respondent lives and operates in China. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant notes that Respondent is not affiliated with Complainant in any way that would allow it to make free use of the NEWPORT mark in domain names. Complainant also argues that Respondent made no effort to obtain licensing rights to the mark, nor did it inquire into the possibility of receiving Complainant’s permission or authorization. The WHOIS information lists “Liu Fang / Fang Liu” as the registrant. In the absence of any Response, the Panel agrees that the record before it affords no grounds for finding that Respondent is commonly known by the <cheapnewportscigarettes.net> 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 also claims that Respondent has not made any bona fide offering in connection with this domain name. Complainant argues that Respondent has employed the <cheapnewportscigarettes.net> domain name in furtherance of its online store where Internet users purchase an assortment of Complainant’s goods along with the goods sold by Complainant’s chief competitors. The <cheapnewportscigarettes.net> domain name redirects Internet users to a website wherein Respondent sells NEWPORT goods and other competing cigarettes. The Panel agrees that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, through its use of the domain name to shuttle Internet users to Respondent’s unauthorized and competing cigarette store. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and used the domain name in violation of Policy ¶ 4(b)(iii). The Panel again notes that Respondent is using the <cheapnewportscigarettes.net> domain name to redirect Internet users to a resolving website where Respondent runs an online cigarette shop. The Panel agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iii) bad faith use and registration for purposes of disrupting Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent is using the NEWPORT mark in the domain name so as to confuse consumers into visiting Respondent’s resolving website, thus increasing the chance that these users will assume the goods sold therein are somehow affiliated with Complainant. The Panel agrees that the use of the <cheapnewportscigarettes.net> domain name to redirect Internet users to a website where Respondent runs an online cigarette shop where Respondent solicits NEWPORT and competing goods for its own profit is violative of Policy ¶ 4(b)(iv) bad faith. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Complainant finally argues that Respondent must have had actual knowledge of Complainant’s rights in the NEWPORT mark, as Complainant has had trademark registrations for this mark for many years. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered 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").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapnewportscigarettes.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 28, 2013
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