Lorillard Licensing Company, LLC v. HTTP Group / DNS Manager
Claim Number: FA1306001503776
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is HTTP Group / DNS Manager (“Respondent”), represented by G. Alan Hammock, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigs.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., 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 7, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <newportcigs.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 June 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@newportcigs.com. Also on June 10, 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.
A timely Response was received and determined to be complete on July 1, 2013.
On July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Lorillard Licensing Company, LLC, uses its NEWPORT marks in connection with its famous cigarettes and related goods and services.
ii. Complainant has both common law rights and owns several 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).
iii. The disputed domain name is simply a combination of Complainant’s NEWPORT mark and the product that Complainant sells using the NEWPORT marks. The addition of the descriptive term “cigs” is insufficient to distinguish the disputed domain name from the NEWPORT marks.
i. Respondent has no rights or legitimate interests in the term NEWPORT or <newportcigs.com>.
ii. Respondent is in no way affiliated with Complainant.
iii. Respondent’s <newportcigs.com> resolves to a website which displays hyperlinks to competing third-party websites.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <newportcigs.com> to conduct an unauthorized sale of NEWPORT cigarettes amounts of use of the disputed domain name in bad faith.
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 2007.
i. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
i. Respondent was not aware that the <newportcigs.com> domain allegedly infringes on any third party rights, nor was Respondent privy to Complainant’s concerns about Respondent’s registration and use of the domain until such time as Respondent received the UDRP complaint filed in the present matter.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <newportcigs.com> domain name to Complainant. However, after the initiation of this proceeding, HTTP Group placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <newportcigs.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
1. Complainant demands that the domain name be transferred from Respondent to Complainant. Respondent agrees to transfer the domain name to Complainant.
2. Since both parties request the same result in this proceeding, the Panel decides to forego the traditional analysis, and finds that transfer be made without further findings.
Respondent having agreed to transfer the domain name to Complainant, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigs.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 22, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page