Lorillard Licensing Company, LLC v. sfd sdf / sdf dfd; sdf sdf / ad sfd v; sdf sd / ssd s; sfs / sfd df; sad / asdsad
Claim Number: FA1307001512210
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is sfd sdf / sdf dfd; sdf sdf / ad sfd v; sdf sd / ssd s; sfs / sfd df; sad / asdsad (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>, <newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc>, registered with Xin Net Technology Corporation.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on July 30, 2013. The Complaint was submitted in both English and Chinese.
On July 30, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>, <newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 August 6, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 26, 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@cheapnewportcigarette.com, postmaster@wholesalenewportcigarettes.com, postmaster@cheapnewportcigaretteswholesalenet.com, postmaster@wholesalenewportcigarettes2013.com, postmaster@newportcigarettes-wholesale.com, and postmaster@cheapnewportcigarettes.cc. Also on August 6, 2013, the Chinese language 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 September 5, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEWPORT mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>, <newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc> domain names, and that Respondent registered and uses the domain names in bad faith.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the same Respondent operates all six disputed domain names under five different aliases: sfd sdf / sdf dfd; sdf sdf / ad sfd v; sdf sd / ssd s; sfs / sfd df; and sad / asdsad. Complainant notes that the WHOIS information for all six disputed domain names lists an identical Registrant email address.
Complainant contends that the same Registrant utilizes that one email address for business purposes.
Complainant also notes that the physical address listed for all Registrants in the WHOIS records is an imaginary city and province in China, and otherwise incorrect and incomplete. Further, Complainant asserts that all disputed domain names were created either on the same day, or within days of each other in June or July 2013. Complainant notes that the domain names all have the same Registrar, and all domain names use the NEWPORT mark. Finally, Complainant points out that each disputed domain name resolves to similar unauthorized online stores where patrons can purchase identical products. Complainant argues that the extensive amount of evidence suggests that all six disputed domain names have the same Registrant.
Accordingly, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant owns the NEWPORT mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,108,876 registered December 12, 1978). Further, 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). Respondent purports to be a resident of China. A complainant need not register the mark in the country where the respondent resides in order to establish rights in the mark pursuant to Policy ¶ 4(a)(i); but rather, it is sufficient that the complainant can demonstrate rights in a mark in some jurisdiction. W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). As Complainant has registered the NEWPORT mark with the USPTO, the Panel finds that Complainant has established rights in the NEWPORT mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that the <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>,
<newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant asserts that the addition of the descriptive term “cigarette” or “cigarettes” is insufficient to distinguish the disputed names from the NEWPORT mark, and instead, heightens the confusing similarity between the disputed domain names and the mark as the term is descriptive of the product that Complainant sells using the mark. Further, Complainant asserts that the addition of the generic term “cheap” or “wholesale” does not distinguish the disputed domain names from the mark. The Panel notes that some of the domain names also include the terms “net” or “2013.” The addition of descriptive or generic words to a domain name that includes the complainant’s mark are insufficient to distinguish the resulting domain name from the mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Complainant additionally contends that the addition a hyphen, gTLD, or a ccTLD is irrelevant to the confusingly similar analysis. The addition a hyphen is irrelevant for purposes of the Policy 4(a)(i) analysis. In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panel wrote, “[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Furthermore, the addition of a gTLD or a ccTLD is irrelevant for purposes of the Policy 4(a)(i) analysis. 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); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”).
Accordingly, the Panel finds that the additions that Respondent made to the NEWPORT mark in the domain names at issue do not sufficiently differentiate the disputed domain names from the NEWPORT mark, and therefore, hold that the <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>, <newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc> domain names are confusingly similar to Complainant’s NEWPORT mark pursuant to Policy ¶ (4)(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use the NEWPORT mark, or to register a domain name incorporating the mark. The WHOIS information from the respective domain names indicate that “sfd sdf / sdf dfd, sdf sdf / ad sfd v, sdf sd / ssd s, sfs / sfd df, sad / asdsad” registered the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent was not authorized by Complainant to use the NEWPORT mark. 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 is not using the disputed domain names in connection with a bona fide offering of goods or services. Complainant asserts that the disputed domain names resolve to websites where Respondent operates unauthorized online stores for Internet users to purchase products identical to the products Complainant offers. The record reflects printouts of the landing pages from the disputed domain names; the printouts show that the landing pages offer NEWPORT products as well as products of Marlboro, a competitor of Complainant. A website that offers a complainant’s goods and goods of complainant’s competitors, does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See 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); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant). Accordingly, the Panel finds that Respondent’s use of the domain names to offer Complainant’s goods and goods of Complainant’s competitors does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name to divert customers away from Complainant’s legitimate business to the disputed domain names to conduct unauthorized sales of NEWPORT cigarettes disrupts Complainant’s business, and is therefore evidence of Respondent’s bad faith. The record supports Complainant’s contention that the landing pages mentioned above offer NEWPORT products as well as products of Marlboro, a competitor of Complainant. There is evidence of bad faith disruption where the respondent uses a domain name to offer the complainant’s products and to offer products of Complainant’s competitors. In David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business. See also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). As such, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has intentionally attempted to attract, by using the NEWPORT mark, Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation of the disputed domain names. Complainant argues that Respondent registered the disputed domain names in a manner calculated to improperly trade off of the goodwill of the NEWPORT mark, which is evidence of Respondent’s bad faith. In Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panel found that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods. Similarly, Respondent is using the disputed domain names to offer primarily NEWPORT products, but also Marlboro products that compete with Complainant. In light of this evidence, the Panel determines that Respondent has intentionally attempted to attract users, using the NEWPORT mark, for commercial gain by creating a likelihood of confusion as to source or affiliation of the disputed domain names. Thus, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the disputed domain names in bad faith because Respondent had actual knowledge of Complainant’s rights in the NEWPORT mark when Respondent registered the disputed domain names. In Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007), the panel held that the respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that the respondent had "actual knowledge of Complainant's mark when registering the disputed domain name." The Panel concludes that Respondent had actual knowledge of Complainant's mark and rights given the inclusion of the NEWPORT mark in the domain names and the NEWPORT related content on the resolving pages. The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapnewportcigarette.com>, <wholesalenewportcigarettes.com>, <cheapnewportcigaretteswholesalenet.com>, <wholesalenewportcigarettes2013.com>, <newportcigarettes-wholesale.com>, and <cheapnewportcigarettes.cc> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 15, 2013
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