Lorillard Licensing Company, LLC v. Nish Patel
Claim Number: FA1306001502912
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Nish Patel (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestnewportcigarettes.com>, 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 June 3, 2013; the National Arbitration Forum received payment on June 3, 2013.
On June 3, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bestnewportcigarettes.com> domain name is 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 June 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@bestnewportcigarettes.com. Also on June 4, 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 27, 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.
1. Complainant, Lorillard Licensing Company, LLC, uses its NEWPORT marks in connection with its famous cigarettes and related goods and services.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered December 12, 1978) and for the NEWPORT CIGARETTES mark (Reg. No. 4,048,145, registered November 1, 2011).
3. The disputed domain name is simply a combination of Complainant’s NEWPORT mark, the product that Complainant sells using the NEWPORT marks, and the descriptive term “best.” Finally, the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) determination.
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is in no way affiliated with Complainant.
ii. Respondent’s <bestnewportcigarettes.com> resolves to a website which displays hyperlinks to competing third-party websites.
5. Respondent registered and is using the disputed domain name in bad faith to promote the unauthorized sale of cigarettes.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <bestnewportcigarettes.com> to conduct an unauthorized sale of cigarettes under the NEWPORT mark amounts of use of the disputed domain name in bad faith.
ii. It is evident that the Respondent had actual or constructive knowledge of Complainant’s right in its NEWPORT marks when Respondent registered the disputed domain name in 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of cigarettes and related goods and services.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered December 12, 1978) and for the NEWPORT CIGARETTES mark (Reg. No. 4,048,145, registered November 1, 2011).
3. Respondent registered the disputed domain name on April 28, 2013.It resolves to a website which displays hyperlinks to competing third-party websites that promote electronic cigarettes and related products.
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 contends that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978) and for the NEWPORT CIGARETTES MARK (Reg. No. 4,048,145, registered November 1, 2011). See Annex 5. The Panel finds that although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides as long as it establishes rights in the mark in some jurisdiction. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel concludes that Complainant has established rights in the NEWPORT and NEWPORT CIGARETTES marks under Policy ¶ 4(a)(i) through its registrations with the USPTO. 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 Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NEWPORT or NEWPORT CIGARETTES marks. Complainant asserts that the disputed domain name is simply a combination of Complainant’s NEWPORT mark, the product that Complainant sells using the NEWPORT marks, and the descriptive term “best.” The Panel notes that Respondent adds the generic term “best” and the descriptive term “cigarettes” to Complainant’s mark in its domain name. The Panel finds that Respondent’s addition of generic or descriptive terms to a mark does not establish distinctiveness 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)). Finally, Complainant argues that the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) determination. The Panel agrees that Respondent’s addition of a gTLD to the domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel concludes that Respondent’s <bestnewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark pursuant to Policy ¶ 4(a)(i).
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 Complainant’s NEWPORT trademark and to use it in its domain name , adding only the generic word “best” and the generic word “cigarettes, the product that Complainant makes, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to resolve to a website which displays hyperlinks to competing third-party websites that promote electronic cigarettes and related products;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is in no way affiliated with Complainant. Complainant argues 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. Complainant contends that Respondent has not attempted to file any trademark applications for the mark NEWPORT in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that Respondent failed to submit evidence that it is commonly known by the domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found 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. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii);
(e) Complainant alleges that Respondent’s domain name
<bestnewportcigarettes.com> resolves to a website which displays hyperlinks to competing third-party websites. The Panel notes that Respondent’s disputed domain name resolves to a website providing competing links titled “lighters,” “wholesale cigarettes,” “quit smoking cigarette,” as well as hyperlinks to competing third-party websites that promote electronic cigarettes and related products; See Annex 2. Complainant contends that such use misleads and diverts Internet traffic for Respondent’s commercial gain, which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. The Panel finds that Respondent’s use of the disputed domain name to list competing hyperlinks is not 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).”).
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 name.
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 alleges that Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <bestnewportcigarettes.com> to conduct an unauthorized sale of competing cigarettes and other related goods amounts of use of the disputed domain name in bad faith. The Panel notes that Respondent’s disputed domain name resolves to a website providing competing links titled “lighters,” “wholesale cigarettes,” “quit smoking cigarette,” as well as hyperlinks to competing third-party websites that promote electronic cigarettes and related products. See Annex 2. Prior panels have found that a respondent’s use of the domain name to provide competing hyperlinks disrupts a complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that as a result of Respondent’s unauthorized use of the disputed domain name to host a resolving webpage containing hyperlinks to competing products and services disrupts Complainant’s business and provides evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent’s use of Complainant’s NEWPORT mark to conduct an unauthorized sale of cigarettes under the NEWPORT mark misleads customers away from Complainant’s legitimate business to Respondent’s <bestnewportcigarettes.com> domain name. The Panel infers that Respondent makes commercial gains from listing competing hyperlinks on Respondent’s <bestnewportcigarettes.com> website. See Annex 2. Therefore, the Panel determines that Respondent’s use of the domain name constitutes attraction of Internet users to Respondent’s site for commercial gain, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Thirdly, Complainant argues that it is evident that Respondent must have had actual or constructive knowledge of Complainant’s right in its NEWPORT marks when Respondent registered the disputed domain name in 2013. Complainant claims that Respondent registered the disputed domain name nearly fifty-seven years after Complainant began using its NEWPORT mark and forty-four years after Complainant obtained its first registration of NEWPORT and Design trademark with the USPTO. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, 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 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 NEWPORT mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <bestnewportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 4, 2013
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