Lorillard Licensing Company, LLC v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1308001515641
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportscigarettes.org>, registered with Gal Communication (CommuniGal) Ltd. (R41-LROR).
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 20, 2013; the National Arbitration Forum received payment on August 20, 2013.
On August 25, 2013, Gal Communication (CommuniGal) Ltd. (R41-LROR) confirmed by e-mail message addressed to the National Arbitration Forum that the <newportscigarettes.org> domain name is registered with Gal Communica-tion (CommuniGal) Ltd. (R41-LROR) and that Respondent is the current regis-trant of the name. Gal Communication (CommuniGal) Ltd. (R41-LROR) has verified that Respondent is bound by the Gal Communication (CommuniGal) Ltd. (R41-LROR) 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 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@newportscigarettes.org. Also on August 26, 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 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant began using its NEWPORT mark in 1956 in connection with the sale of menthol cigarettes, and is now the third-largest tobacco company in the United States.
Complainant holds a registration for its NEWPORT trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,600,870, registered July 30, 2002.
Respondent registered the contested <newportscigarettes.org> domain name on May 23, 2013.
The domain name is confusingly similar to Complainant’s NEWPORT mark.
Respondent has been not commonly known as <newportscigarettes.org>, and Complainant has not authorized Respondent to use its NEWPORT mark in a domain name.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name resolves to a website that is used to promote links to the websites of Complainant’s commercial competitors as well as to unrelated third-party websites.
Respondent employs the domain name to mislead Internet users looking to purchase products under the NEWPORT mark.
Respondent improperly profits from this use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the NEWPORT mark when Respondent registered the <newportscigarettes.org> domain name.
Respondent has demonstrated bad faith in the registration and use of the dis-puted domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in its NEWPORT mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in a mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <newportscigarettes.org> domain name is confusing-ly similar to the NEWPORT trademark. The domain name incorporates the mark in its entirety and merely adds the letter “s” and the term “cigarettes,” which is descriptive of Complainant’s business, as well as the generic Top-Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding, under Policy ¶ 4(a)(i), that the addition of the letter “s” and of generic top-level domains to the <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid confusing similarity between the domain names and a UDRP complainant’s BARNESANDNOBLE.COM mark).
See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel three finding that a respondent’s <amextravel.com> domain name was confusingly similar to a UDRP complainant’s AMEX mark, reciting that 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).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <newportscigarettes.org> domain name, and that Complainant has not authorized Respondent to use its NEWPORT mark in a domain name. Moreover, the pertinent WHOIS informa-tion identifies the registrant of the domain name only as “Domain Manager / samirnet-domain names for sale,” which does not resemble the domain name.
On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent uses the domain name to profit by promoting links to the websites of Complain-ant’s commercial competitors as well as to unrelated third-party websites. This employment of the domain name is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding that a respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii) .
We are persuaded by the evidence that Respondent’s employment of the con-tested <newportscigarettes.org> domain name, as alleged in the Complaint, dis-rupts Complainant’s business. This stands as proof that the domain name was registered and is being used in bad faith as described in Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced by the evidence that Respondent’s use of a domain name which is confusingly similar to Complainant’s NEWPORT mark to profit from confusion among Internet users as to the possibility of Complainant’s affil-iation with the domain name and resolving website demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Constel-lation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with a UDRP complainant because a respondent was that domain name to redirect Internet users to a website with links unrelated to that complainant, likely receiving click-through fees in the process); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the do-main name provided links to Complainant's competitors and Re-spondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally, under this head of the Policy, the evidence is persuasive that Respond-ent knew of Complainant and its rights in the <newportscigarettes.com> domain name when it registered the domain name. This is further evidence of bad faith on the part of Respondent in the registration of the domain name. See, for example, Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), where a panel concluded that a respondent had actual notice of a UDRP com-plainant’s POKÉMON and PIKACHU trademarks when it registered a contested domain name, and that respondent’s actual notice of the marks was evidence of that respondent’s bad faith in registering the domain name. See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), where a panel found bad faith in the registration of a domain name because that respondent “must have known about the complainant’s mark when it registered the subject domain name.”
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <newportscigarettes.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 1, 2013
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