Lorillard Licensing Company, LLC v. Mike Edwards
Claim Number: FA1308001515636
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Mike Edwards (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cigaretteskent.com>, registered with Center of Ukrainian Internet Names (UKRNAMES).
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.
The Honorable Charles K. McCotter, Jr. (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.
After numerous requests, the Registrar, UKRNAMES, has not confirmed to the National Arbitration that the <cigaretteskent.com> domain name is registered with UKRNAMES or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@cigaretteskent.com. Also on September 11, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
A. Complainant
1. Complainant is the third-largest tobacco company in the United States. Complainant has used the KENT marks in connection with cigarettes and related products and services since 1952.
a. Complainant owns multiple registrations for its KENT mark with the United States Patent and Trademark Office (“USPTO”); see, e.g., Reg. No. 1,108,879 registered December 12, 1978).
2. Respondent’s <cigaretteskent.com> domain name is confusingly similar to Complainant’s KENT mark.
a. Respondent’s domain name contains Complainant’s mark in its entirety.
b. Respondent’s disputed domain name is a combination of Complainant’s KENT mark with the goods that Complainant sells using the KENT mark.
c. The term “cigarettes” is descriptive of what Complainant sells using its KENT marks.
d. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
3. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <cigaretteskent.com> domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
c. Respondent has used the disputed domain name for commercial gain to mislead and divert consumers to a website promoting the unauthorized sale of cigarettes using Complainant’s mark.
4. Respondent registered and is using the <cigaretteskent.com> domain name in bad faith.
a. Respondent intentionally uses a domain name containing Complainant’s KENT mark to mislead and divert customers away from Complainant’s legitimate business to the <cigaretteskent.com> domain name to conduct an unauthorized sale of Complainant’s products.
b. Respondent is trading on the goodwill associated with Complainant’s KENT mark.
c. Respondent registered the <cigaretteskent.com> domain name nearly 59 years after Complainant began using its KENT mark, and 33 years after Complainant obtained its first registration of the KENT mark with the USPTO.
d. Respondent had actual and constructive knowledge of Complainant’s mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Lorillard Licensing Company, LLC, is a large tobacco company in the United States. Complainant has used the KENT marks in connection with cigarettes and related products and services since 1952. Complainant owns multiple registrations for its KENT mark with the United States Patent and Trademark Office (“USPTO”); see, e.g., Reg. No. 1,108,879 registered December 12, 1978). Respondent, Mike Edwards, registered the <cigaretteskent.com> domain name on September 29, 2011.
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 that Complainant has rights in the KENT mark under Policy ¶ 4(a)(i) through registration for the KENT mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s <cigaretteskent.com> domain name is confusingly similar to Complainant’s KENT mark under Policy ¶ 4(a)(i). Respondent’s <cigaretteskent.com> domain name is a combination of Complainant’s KENT mark and the descriptive term “cigarettes,” which is the product that Complainant sells. Respondent uses the “.com” gTLD at the end of the <cigaretteskent.com> domain name. These variations are insufficient to differentiate a disputed domain name from a given mark. 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). The Panel finds that Respondent’s <cigaretteskent.com> domain name is confusingly similar to Complainant’s registered KENT mark under Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii). Complainant contends that it has never licensed Respondent to use its mark and that Complainant is not affiliated with Respondent in any way. Complainant also states that Respondent is trading off the goodwill that Complainant has created in relation to its KENT mark and Complainant’s cigarette products. Complainant argues that Respondent has never attempted to register or obtain a legitimate trademark registration for the KENT mark, as a legitimate trademark owner would presumably do.
The WHOIS information for Respondent’s <cigaretteskent.com> domain name lists “Mike Edwards” as registrant. A respondent has no rights or legitimate interests in a disputed domain name when there is no indication that the respondent was commonly known by the domain name, and where a complainant had not authorized the respondent to register the domain name featuring its registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <cigaretteskent.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). Respondent registered the <cigaretteskent.com> domain name on September 29, 2011, which was 59 years after Complainant’s first use of the KENT mark in connection with its cigarette products. Complainant argues that Respondent’s registration date was also 33 years after Complainant first registered the KENT mark. Complainant argues that Respondent uses the <cigaretteskent.com> domain name to lure Internet users to the website resolving from the disputed domain name, in order to commercially gain from the unauthorized sale of cigarettes using Complainant’s KENT mark.
The disputed domain name resolves to an online store where products identical to Complainant’s are offered for sale. Use of a confusingly similar domain name to resolve to a website selling a complainant’s products is not a bona fide offering of goods or services, or a legitimate noncommercial fair use of the domain name. 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). The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii), and thus has no rights or legitimate interests in the <cigaretteskent.com> domain name.
Complainant argues that Respondent has registered and is using the <cigaretteskent.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent intentionally uses a confusingly similar domain name to resolve to a website featuring Complainant’s products for sale. Using a confusingly similar or identical disputed domain name to resolve to a website offering a complainant’s products for sale indicates bad faith use and registration under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant contends that Respondent has registered and is using the <cigaretteskent.com> disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is attempting to attract Internet users to its website resolving from the <cigaretteskent.com> domain name and confuse them as to Complainant’s association with the website and products offered. Complainant further states that Respondent offers Complainant’s products for sale from the website resolving from Respondent’s <cigaretteskent.com> domain name. Previous panels have found that creating a likelihood of confusion with a complainant’s mark by using a confusingly similar domain name to sell the complainant’s products without the complainant’s authority is suggestive of bad faith use and registration under Policy 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). The Panel finds that Respondent registered and is using the <cigaretteskent.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that its trademark registrations for the KENT mark existed well before the registration of the disputed domain name. Complainant alleges that Respondent registered the <cigaretteskent.com> domain name nearly 59 years after Complainant began using the KENT mark, and 33 years after Complainant obtained its first registration with the USPTO for the KENT mark. Complainant thus argues that Respondent had constructive and actual knowledge of Complainant's rights in the 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 and Respondent’s use of the resolving website to sell Complainant’s own products, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cigaretteskent.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 16, 2013
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