national arbitration forum

 

DECISION

 

Lorillard Licensing Company, LLC v. PPA Media Services / Ryan G Foo

Claim Number: FA1307001511021

 

PARTIES

Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA.  Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <newportcigarette.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 23, 2013.

 

On July 30, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <newportcigarette.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@newportcigarette.com.  Also on July 31, 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 August 27, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant uses the NEWPORT CIGARETTE mark in connection with its cigarette products. Complainant first began using the marks in 1956, has continually used the marks since that time, and actively promotes its marks. Complainant is currently the third largest tobacco company in the United States.

2.    Complainant owns numerous registrations for the NEWPORT mark with the United States Patent and Trademark Office (“USPTO”), including the NEWPORT mark (e.g., Reg. No. 1,108,876 registered December 12, 1978). See Complainant’s Annexes 5 and 6.

3.    Respondent registered the <newportcigarette.com> domain name on July 29, 2002, forty-six years after Complainant first began using the mark, and uses the domain name to make a commercial gain by promoting a website which displays hyperlinks to competing third-party websites.

4.    Respondent did not obtain a license from Complainant to use the NEWPORT mark or to post content on the resolving website referring to Complainant’s products. The <newportcigarette.com> domain name is confusingly similar to Complainant’s NEWPORT mark.

5.    Respondent misleads and diverts customers from Complainant’s legitimate website to the <newportcigarette.com> domain name in order to make a profit from the content at the resolving website.

6.    Respondent registered the disputed domain name in bad faith, demonstrated by its attempt to attract Complainant’s customers, and by Respondent’s actual knowledge of Complainant’s rights in the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the NEWPORT mark.  Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <newportcigarette.com> domain name, and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

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 Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Identical and/or Confusingly Similar

Complainant claims that it owns rights in the NEWPORT mark as a result of its trademark registrations with the USPTO (e.g., Reg. No. 1,108,876 registered December 12, 1978). A complainant may establish rights in its mark through registration with the USPTO, and further, a complainant’s rights are valid as a result of a trademark registration regardless of the respondent’s country of residence. 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)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel concludes that under Policy  ¶ 4(a)(i), Complainant has successfully demonstrated its rights in the NEWPORT mark through its USPTO registration and may assert those rights against Respondent, who resides in Chile.

 

Complainant makes the assertion that the <newportcigarette.com> domain name is confusingly similar to the NEWPORT mark, pointing out that the domain incorporates the NEWPORT mark as a whole, and adds a term descriptive of Complainant’s products, “cigarette.” Adding a term descriptive of Complainant’s business fails to adequately distinguish the domain name from the mark. 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)). The Panel also notes that the domain name includes the generic top-level domain (“gTLD”) “.com,” which the Panel finds does not alleviate confusing similarity to the disputed domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As a result of the foregoing, the Panel determines that the <newportcigarette.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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 asserts that Respondent did not seek or obtain permission to use the NEWPORT mark, and Respondent is in no way affiliated with Complainant. The WHOIS information for the disputed domain name identifies “PPA Media Services / Ryan G Foo” as the registrant.  The conflicting WHOIS information between the domain name and the registrant name is one factor in determining that the respondent is not commonly known by the domain name in question. Complainant’s contentions that Respondent has no permission to use the mark, and the WHOIS information for the domain name, are persuasive such that the Panel holds that Respondent is not commonly known by the <newportcigarette.com> domain name pursuant to 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant alleges that Respondent uses the disputed domain name to host a website that is not connected with a bona fide offering of goods or services, as the domain name displays hyperlinks that lead to competing third-party websites. Complainant argues that such use misleads and diverts Internet traffic in order to drive Respondent’s commercial gain. Complainant’s Annex 2 shows a screen shot of the resolving website, which includes hyperlinks to various websites related to cigarette sales or services, such as “Newport Coupons,” “Cheap Cigarettes,” and “Table Cigarette Lighters.” A respondent does not have rights or legitimate interests in a domain name when the domain resolves to a website that leads visitors to click on hyperlinks that direct them to third-party websites. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). The Panel similarly concludes that Respondent’s use of the <newportcigarette.com> domain name fails to demonstrate a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent intentionally uses Complainant’s NEWPORT mark to mislead and divert customers away from Complainant’s legitimate business, and bring them instead to the website corresponding with the <newportcigarette.com> domain name that displays hyperlinks owned by entities in competition with Complainant’s business. Complainant alleges that Respondent creates confusion as to an affiliation with Complainant in order to realize a commercial gain. The Panel determines that Respondent registered the domain name to make a commercial profit, by attracting Internet users confused by the apparent association between Complainant and the domain name, thereby demonstrating bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

Complainant contends that Respondent registered the <newportcigarette.com> domain name because the name contained Complainant’s famous NEWPORT trademark. Complainant alleges that the domain name was registered forty-six years after Complainant began using the mark, and under such circumstances, it is evident that Respondent must have had actual knowledge in the mark at the time it registered the disputed domain name. The Panel concludes that the domain name’s obvious connection with Complainant, given the presence of a term in the domain name descriptive of Complainant’s products within the name, shows Respondent had actual knowledge of Complainant’s NEWPORT mark at the time it registered the <newportcigarette.com> domain name.  Thus the Panel finds that the domain name was registered in bad faith under Policy ¶ 4(a)(iii). See 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)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <newportcigarette.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  September 11, 2013

 

 

 

 

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