Lorillard Technologies, Inc v. Tiger Media / Tyler Taylor
Claim Number: FA1306001504086
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Tiger Media / Tyler Taylor (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blue-cigarettes.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.
On June 11, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <blue-cigarettes.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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@blue-cigarettes.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.
A timely Response was received and determined to be complete on July 5, 2013.
On July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
A. Complainant makes the following assertions:
1. Respondent’s <blue-cigarettes.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BLU CIGS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent
1. In its Response, Respondent asserts that its use of "blue" in the domain name at issue is distinguishable from Complainant's BLU ECIGS mark.
2. Respondent claims that it purchased the domain name at issue in order to participate in Complainant’s affiliate program and that Complainant has been aware that Respondent has been an affiliate using the <blue-cigarettes.com> domain since at least June of 2009. As an affiliate, Respondent claims to have generated thousands of dollars in commissions from Complainant.
C. Additional Submissions
Both parties filed Additional Submissions. Complainant had the opportunity thereby to include an affidavit or other evidence to rebut Respondent's claim of rights and legitimate interests in the domain as a known and commission paid participant in Complainant's affiliate program for the past four years. It did not.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent contends that it purchased this domain in order to promote and sell BLU CIGS products as part of Complainant’s affiliate program, and that Respondent’s site has now become an information outlet for information on e-cigarettes. Respondent claims that Complainant was aware of Respondent’s site as far back as June of 2009, and was further aware that Respondent was using the disputed domain to promote Complainant’s products. Respondent claims to have interacted with Complainant’s affiliate team on numerous occasions and generated thousands of dollars in affiliate fees. Respondent asserts that at no time did Complainant ever ask Respondent to stop using the disputed domain, and that Complainant in fact encouraged Respondent to continue promoting Complainant’s products.
In its Additional Submission, not supported by an affidavit denying Respondent's status as a compensated affiliate, Complainant argues that no evidence exists in the record to demonstrate that Respondent is in fact a member of Complainant’s affiliate program. Complainant further argues that even if Respondent was an affiliate of Complainant, Respondent’s registration and use of the disputed domain name would constitute a violation of Complainant’s Affiliate Agreement.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
"A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint."
According to the panel in Love, complex fact-dependent cases such as the one presented here may be better decided by the courts than by a UDRP panel:
"When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility."
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
"[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on."
Accordingly, this Panel concludes that the instant dispute contains questions of contractual interpretation, the relationship and apparently ongoing business between the parties. Thus, this matter falls outside the scope of the UDRP and the Panel elects to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
For the foregoing reasons, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blue-cigarettes.com> domain name REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: July 18, 2013
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