Lorillard Licensing Company, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1308001515635
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 <newportcigarettes.com>, registered with Internet.bs Corp.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2013; the National Arbitration Forum received payment on August 20, 2013.
On August 28, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes.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 September 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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.com. Also on September 3, 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 September 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <newportcigarettes.com> domain name on November 12, 2001.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 states that it uses the NEWPORT mark in connection with the sale of tobacco goods, namely cigarettes. Complainant first used the NEWPORT mark in 1956, and has since continuously and actively promoted and solicited goods under the NEWPORT mark since that time. Complainant claims that its NEWPORT cigarettes have become the number one selling menthol cigarette in the United States. Complainant notes that it has obtained trademark registration for the NEWPORT mark with the United States Patent and Trademark Office ("USPTO") (1,108,876 registered December 12, 1978)). The Panel finds that Complainant has satisfactorily illustrated its rights in the NEWPORT mark so as to satisfy Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel agrees that Complainant’s rights under Policy ¶ 4(a)(i) are strong despite the fact that Respondent does not reside in the United States. See 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.”).
Complainant next argues that the <newportcigarettes.com> domain name is confusingly similar to the NEWPORT mark. Complainant states that the addition of the descriptive term “cigarettes” does not distinguish the domain name, and the addition of the gTLD “.com” is irrelevant under the Policy. The Panel agrees that the addition of the gTLD “.com” is not relevant to this analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel further agrees that a descriptor such as “cigarettes” enhances the confusing similarity of this domain name, as the NEWPORT mark is used specifically for the promotion of cigarettes. See 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). Thus the Panel concludes that the <newportcigarettes.com> domain name is confusingly similar to the NEWPORT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not in any way affiliated with Complainant, nor has Respondent any license or authorization to use the NEWPORT mark. The Panel notes that the WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the <newportcigarettes.com> domain name. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found that when there was no evidence in the record to identify the respondent, the WHOIS record is the most useful tool in making a finding under Policy ¶ 4(c)(ii). The Panel agrees that as Respondent is only known to be “PPA Media Services / Ryan G Foo,” in so far as the WHOIS information, there is no basis for finding that Respondent is commonly known as the <newportcigarettes.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the <newportcigarettes.com> domain name to promote the unauthorized sale of cigarettes using the NEWPORT mark. Complainant claims that Respondent’s attempt to mislead consumers is not bona fide. The Panel notes that the <newportcigarettes.com> domain name resolves to a website that is dedicated to hosting click-through advertisements to various sponsored content, such as “Newport News” and “Cheap Cigarettes.” The panel in Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008), found that the use of a confusingly similar domain name for purposes of hyperlink advertisements is not bona fide, particularly when the advertisements send Internet users to websites marketing competing goods. The Panel finds that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use because the domain name is being used, in part, to promote hyperlink redirects to competing goods.
Complainant has proven this element.
Complainant argues that Respondent has disrupted Complainant’s NEWPORT business. The Panel notes that among the hyperlink advertisements viewable on the <newportcigarettes.com> domain name, there are related search links to “Newport Pleasure Goods,” “Stop Smoking Cigarettes,” “Cheap Cigarettes,” and “Buy Electronic Cigarettes.” The panel in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), found the presence of competitive, related, hyperlink advertisements to constitute evidence of Policy ¶ 4(b)(iii) bad faith commercial disruption. The Panel agrees that the hyperlinks available on the domain name’s website are competitive in the manner envisioned by the Policy, and finds evidence of bad faith commercial disruption under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent uses the <newportcigarettes.com> domain name to send Internet users to its own unauthorized website, selling NEWPORT products, and creates the likelihood that Internet users will mistake Complainant as the source or origin of the goods sold therein. The Panel notes that some of the hyperlinks viewable through the <newportcigarettes.com> domain name’s resolving website are related to cigarettes, with one advertisement featuring the NEWPORT mark. Complainant also argues that Respondent capitalizes on the initial interest confusion in luring Internet users through to the <newportcigarettes.com> domain name’s resolving website. Complainant claims that even if Internet users realize at the moment of arrival that the goods sold therein are not associated with Complainant, the damage is already done as the Internet user could elect to stay with the competing and unauthorized goods. The Panel finds that the use of this confusingly similar domain name to promote sponsored advertisement content, to the benefit of Respondent, illustrates a Policy ¶ 4(b)(iv) bad faith attempt to create a likelihood that Internet users will be confused into believing that Complainant is the source or origin of the hyperlink and promoted advertisements. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent must have had actual or constructive knowledge of Complainant’s rights in the NEWPORT mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.") The Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <newportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 27, 2013
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