Lorillard Licensing Company, LLC v. LeaseDomains.com
Claim Number: FA1306001503774
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP, California, USA. Respondent is LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettes-cheap.com> registered with Go Canada Domains, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On June 11, 2013, Go Canada Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes-cheap.com> domain name is registered with Go Canada Domains, LLC and that Respondent is the current registrant of the name. Go Canada Domains, LLC has verified that Respondent is bound by the Go Canada Domains, 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 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@newportcigarettes-cheap.com. Also on June 14, 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 July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant
A. Complainant’s mark:
i. Complainant owns the NEWPORT mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,108,876 registered December 12, 1978).
ii. Complainant owns additional marks through USPTO registrations that incorporate the NEWPORT mark, such as NEWPORT PLEASURE (Reg. No. 2,711,321 registered April 29, 2003), and NEWPORT MEDIUM (Reg. No. 2,597,763 registered July 23, 2002).
iii. Complainant started using the NEWPORT mark in 1956 in connection with cigarettes and related goods and services, and has actively promoted NEWPORT cigarettes since.
B. Respondent’s Infringing Activities:
i. Policy ¶ 4(a)(i)
1. The <newportcigarettes-cheap.com> domain name is identical or confusingly similar to Complainant’s NEWPORT mark, as it reproduces the mark in its entirety and is used in connection with the promotion of the sale of identical goods. Further, the disputed domain name merely adds the generic term “cheap” and the descriptive term “cigarettes,” which heightens the confusing similarity between the disputed domain name and Complainant’s mark. The generic top-level domain (“gTLD”) “.com” is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the term NEWPORT or the disputed domain name because Respondent is in no way affiliated with Complainant.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent uses the <newportcigarettes-cheap.com> domain name to promote the unauthorized sale of cigarettes. The disputed domain name resolves to a website displaying hyperlinks to competing third-party websites.
iii. Policy ¶ 4(a)(iii)
1. Respondent registered the disputed domain primarily to disrupt Complainant’s business. Respondent uses the disputed domain name to mislead and divert customers away from Complainant’s legitimate business to conduct an unauthorized sale of NEWPORT cigarettes, showing bad faith.
2. Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
3. Respondent had actual or constructive knowledge of Complainant’s rights in the mark, revealing Respondent’s bad faith.
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is Lorillard Licensing Company, LLC who list its address as Greensboro, NC, USA. Complainant owns several domestic and international trademark registrations for the marks NEWPORT and NEWPORT CIGARETTES as well as related marks in the NEWPORT family. Complainant has been using the NEWPORT mark continuously since at least 1978. Complainant also owns and operates a website at <newport-pleasure.com> featuring additional information on its goods and services.
Respondent is LeaseDomains.com which list its address as Palos Park, IL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the domain name at issue on November 10, 2012.
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 to own the NEWPORT mark through its trademark registration with the USPTO (e.g., Reg. No. 1,108,876 registered December 12, 1978). Complainant further claims to own additional marks through USPTO registrations that incorporate the NEWPORT name, such as NEWPORT PLEASURE (Reg. No. 2,711,321 registered April 29, 2003), and NEWPORT MEDIUM (Reg. No. 2,597,763 registered July 23, 2002). The Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the NEWPORT mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues the <newportcigarettes-cheap.com> domain name is identical or confusingly similar to Complainant’s NEWPORT mark. Complainant contends the disputed domain reproduces the mark in its entirety. Complainant further asserts the disputed domain name merely adds the generic term “cheap” and the descriptive term “cigarettes,” which heighten the confusing similarity between the disputed domain name and Complainant’s mark. Complainant argues such alterations, and the addition of the gTLD “.com” are insufficient to differentiate the disputed domain name from its mark. Previous panels have held that the addition of common terms are insufficient to distinguish Respondent’s domain name from Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Additionally, previous panels have generally found that the addition of descriptive terms, hyphens, and the gTLD “.com,” are insufficient to differentiate a respondent’s domain name from a complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel finds the additions of generic or descriptive terms, a gTLD, and a hyphen to Complainant’s mark are insufficient to distinguish the disputed domain name from the NEWPORT mark for the purposes of Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues Respondent has no rights or legitimate interests in the term NEWPORT or the disputed domain name because Respondent is in no way affiliated with Complainant. Because Respondent did not have authorization to use the mark and has failed to provide evidence that it is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Complainant contends that Respondent uses the <newportcigarettes-cheap.com> domain name to mislead users and promote the unauthorized sale of cigarettes. Complainant alleges that the disputed domain name resolves to a website that purports to offer Complainant’s products, and displays hyperlinks to competing third-party websites. Previous panels have generally found that a confusingly similar domain name that promotes links to a complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Accordingly, the Panel finds that Respondent’s use of the domain name in dispute to display hyperlinks to competing third-party websites does not constitute 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues Respondent’s bad faith is evidenced by Respondent’s registration of the disputed domain name primarily to disrupt Complainant’s business. Complainant contends Respondent uses the disputed domain name to mislead and divert customers away from Complainant’s legitimate business to conduct an unauthorized sale of NEWPORT cigarettes. Previous panels have found evidence of bad faith disruption where a respondent uses the disputed domain name to feature hyperlinks to a complainant’s competitors or to complainant’s own website. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s actions in competing with or selling Complainant’s products, and subsequently disrupting Complainant’s business, is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation of the disputed domain name. Complainant asserts Respondent registered the disputed domain name in a manner calculated to improperly trade off of the goodwill of the NEWPORT mark, revealing Respondent’s bad faith. Where respondents have presumably commercially gained by creating such confusion, previous panels have found evidence of bad faith. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel finds that Respondent’s registration and use of a confusingly similar domain name to mislead Complainant’s customers as to the sites affiliation for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv).
Complainant further alleges the resolving site purports to offer Complainant’s products, and displays hyperlinks to competing third-party websites. Previous panels have found evidence of respondents’ bad faith where a respondent profits from the unauthorized sale of a complainant’s products. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel finds that evidence of Respondent’s profits from the unauthorized sale of Complainant’s products, is indicative of Respondent’s bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigarettes-cheap.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 22, 2013
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