Lorillard Licensing Company, LLC v. Kevin John
Claim Number: FA1308001515640
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Kevin John (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportscigarettes.us>, 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.
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 a hard copy on August 20, 2013.
On August 22, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <newportscigarettes.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 5, 2013, Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the”Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <newportscigarettes.us> domain name on March 27, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Lorillard Licensing Company, LLC, uses the NEWPORT and NEWPORT CIGARETTES mark in connection with the sale of cigarettes and other tobacco products. Complainant registered these marks with the United States Patent and Trademark Office ("USPTO") (NEWPORT: Reg. No. 871,160 registered on June 17, 1969) (NEWPORT CIGARETTES: Reg. No. 4,048,145 registered on November 1, 2011).
Respondent, Kevin John, registered the <newportscigarettes.us> domain name on March 27, 2012. Respondent uses the domain name to promote unauthorized sales of cigarettes and related goods through hyperlink advertisements.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the NEWPORT and NEWPORT CIGARETTES marks under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The <newportscigarettes.us> domain name adds an additional letter “s” to the NEWPORT CIGARETTES mark, and affixes the usTLD to the mark. The usTLD is not a relevant addition to the domain name. See, e.g., Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a [UDRP] Policy ¶ 4(a)(i) analysis”). The deletion of the NEWPORT CIGARETTES mark’s spacing is not relevant either, as spacing is prohibited in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under UDRP Policy ¶ 4(a)(i)). In T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007), the panel determined that the addition of a single letter “s” to a registered trademark was not enough to avoid a finding of confusing similarity. The Panel therefore finds that the <newportscigarettes.us> domain name is confusingly similar to the NEWPORT CIGARETTES 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).
The Panel finds that Respondent has no basis for claiming a mark identical to the <newportscigarettes.us> domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002)(Policy ¶ 4(c)(i) of the usTLD could not be satisfied when there was no affirmative evidence to suggest that the respondent had registered any trademark).
Respondent never sought or obtained a license, permission, or authorization to make use of Complainant’s marks in any domain names. The WHOIS information shows that Respondent is “Kevin John.” The Panel finds that Respondent is not commonly known by the <newportscigarettes.us> domain name under Policy ¶ 4(c)(iii). See, e.g., Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant argues that Respondent has not made any bona fide offerings through this <newportscigarettes.us> domain name, and has instead put the domain name to use in promoting unauthorized sales of cigarettes and related goods through hyperlink advertisements. The <newportscigarettes.us> domain name resolves to a website promoting various cigarette-related advertisements (e.g., “Cheap Cigarettes,” “Stop Smoking Cigarettes,” “Dunhill Cigarette Holder,” “Buy Cigarettes”) and other unrelated hyperlink advertisements (e.g., “Aarp Discount Coupons,” “Coupons Printable,” “Financial Planning). The panel in EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007), found that a respondent’s use of a domain name to promote an array of hyperlinks, some of which competed with complainant’s business, was not a bona fide use or offering. Likewise, the Panel finds that Respondent’s use of the <newportscigarettes.us> domain name is neither a bona fide use under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant claims that Respondent seeks to divert customers away from Complainant’s business to competing goods. Some of the hyperlinks on the <newportscigarettes.us> domain name’s website include links to low-cost cigarette products. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel found the presence of competing hyperlinks on the respondent’s website to be evidence of Policy ¶ 4(b)(iii) bad faith disruption. The Panel finds that Respondent’s use of the <newportscigarettes.us> domain name to promote competing cigarette products is evidence of Policy ¶ 4(b)(iii) bad faith.
Complainant next argues that Respondent creates a likelihood that Internet users will confuse Complainant as the source or origin of the goods or services promoted through the <newportscigarettes.us> domain name’s landing page. Respondent capitalizes on the likelihood that Internet users who visit the website will believe that they are viewing sponsored content that has been approved or, endorsed, or originates from Complainant and its NEWPORT CIGARETTES mark. See, e.g., TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). As such, the Panel finds Policy ¶ 4(b)(iv) bad faith from this conduct.
Complainant finally argues that Respondent had actual or constructive notice of Complainant’s rights in the marks when registering the <newportscigarettes.us> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportscigarettes.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 15, 2013
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