national arbitration forum

 

DECISION

 

Lorillard Licensing Company, LLC v. Jackson, Matt

Claim Number: FA1308001515865

PARTIES

Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP, California, USA. Respondent is Jackson, Matt (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <newportecigarettes.com> and <newportelectroniccigs.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received payment on August 21, 2013.

 

On August 22, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <newportecigarettes.com> and <newportelectroniccigs.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newportecigarettes.com and postmaster@newportelectroniccigs.com.  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 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant makes the following allegations:

1.    Policy ¶ 4(a)(i)

a.    Complainant, Lorillard Licensing Company, uses its NEWPORT marks in connection with the sale of the number one selling menthol cigarette in the United States. Complainant is the third largest tobacco company in the United States and began using its NEWPORT marks in 1956.

b.    Complainant owns registrations of its NEWPORT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,108,876, registered December 12, 1978). See Complainant’s Exhibit 6.

c.    The disputed <newportecigarettes.com> and <newportelectroniccigs.com> domain names are confusingly similar to Complainant’s NEWPORT mark, because both domain names incorporate the mark in its entirety and merely the descriptive terms “e” and “cigarettes,” and “electronic” and “cigs,” respectively.

2.    Policy ¶ 4(a)(ii)

a.    Respondent is not commonly known by either of the disputed domain names, and Complainant has not authorized Respondent to use its NEWPORT mark in a domain name.

b.    Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain names resolve to a website offering the unauthorized sale of Complainant’s cigarette goods and that hosts links advertising various cigarette-related products such as lighters, cigarette rollers, and cigarette cases. See Complainant’s Exhibit 2.

3.    Policy ¶ 4(a)(iii)

a.    Respondent has demonstrated bad faith registration and use of the <newportecigarettes.com> and <newportelectroniccigs.com> domain names pursuant to Policy ¶ 4(b)(iii), because the disputed domain names divert potential customers away from Complainant and toward Respondent.

b.    Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv), because the domain names mislead Internet users seeking products under Complainant’s NEWPORT mark, and Respondent is improperly profiting therefrom. 

c.    Respondent has also demonstrated bad faith pursuant to Policy ¶ 4(a)(iii), because Respondent had actual notice of Complainant’s rights in the NEWPORT mark when it registered the disputed domain names.

4.      Respondent registered the <newportecigarettes.com> domain name on May 3, 2013 and the <newportelectroniccigs.com> domain name on May 7, 2013.

B. Respondent did not submit a Response.

 

 

 

 

 

FINDINGS

1.    Respondent’s <newportecigarettes.com> and <newportelectroniccigs.com> domain names are confusingly similar to Complainant’s NEWPORT mark.

2.    Respondent does not have any rights or legitimate interests in the <newportecigarettes.com> and <newportelectroniccigs.com> domain names.

3.    Respondent registered or used the <newportecigarettes.com> and <newportelectroniccigs.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges that it owns registrations of its NEWPORT mark with the USPTO (e.g., Reg. No. 1,108,876, registered December 12, 1978). See Complainant’s Exhibit 6. Previous panels have held that a complainant’s registration of its mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, the Panel reasonably determines that Complaint owns interests in the NEWPORT mark pursuant to Policy ¶ 4(a)(i).

 

Complainant next alleges that the disputed <newportecigarettes.com> and <newportelectroniccigs.com> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant points out that both of the disputed domain names fully incorporate the NEWPORT mark in its entirety and merely add two descriptive terms: the terms “e” and “cigarettes,” or the terms “electronic” and “cigs.” Complainant argues that the terms “cigarettes” and “cigs” are descriptive of the cigarette products that Complainant offers under its NEWPORT mark. Complainant further alleges that the terms “e” and “electronic” are descriptive of electronic or “e” cigarettes, which Complainant has recently started offering under a new product line. The Panel observes that in addition to these terms, both of the disputed domain names add the generic top-level domain (“gTLD”) “.com.” However, the Panel notes that previous panels have consistently found that a disputed domain name’s addition of a gTLD such as “.com” does not sufficiently distinguish the domain name from the complainant’s mark pursuant to the Policy. See, e.g., Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel further notes that previous panels have held that a disputed domain name’s addition of a term describing the complainant’s product or service does not sufficiently distinguish the domain name from the mark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Therefore, the Panel determines that the added terms “e” and “cigarettes” and “electronic” and “cigs” are descriptive of cigarette and electronic cigarette products offered by Complainant, and the Panel holds that the addition of these terms in the disputed domain names does not sufficiently distinguish the domain names from Complainant’s NEWPORT mark, and that the disputed domain names are thus confusingly similar to the NEWPORT mark pursuant to Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

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 suggests that Respondent is not commonly known by either the <newportecigarettes.com> or the <newportelectroniccigs.com> domain names pursuant to Policy ¶ 4(c)(ii). Complainant asserts that it has not authorized Respondent to use its NEWPORT mark in a domain name. Previous panel decisions have held that a respondent is not commonly known by a disputed domain name where the complainant asserts it has not given the respondent permission to use its mark and nothing else on the record, including the WHOIS information, otherwise indicates that the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel determines that in the instant proceeding that the WHOIS information identifies the registrant of the disputed domain names as “Jackson, Matt,” which tends to show that Respondent is known by that name and not by the name of <newportecigarettes.com> or <newportelectroniccigs.com>. Thus, the Panel determines that there is no other evidence on the record to suggest that Respondent is commonly known by the disputed domain names, and the Panel  holds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant next alleges that Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii) because the disputed domain names resolve to a website that promotes the “unauthorized sale of cigarettes using Complainant’s NEWPORT marks.” See Complainant’s Exhibit 2. The Panel observes that based on the screenshots provided by Complainant, the website resolving from both of the disputed domain names does not appear promote the sale of cigarettes. See id. However, the Panel determines that the at-issue website does display links that advertise cigarette-related products, including links entitled “Smoking Accessory,” “Lighter,” “Zippo,” “Colibri,” “Torch Lighter,” “Butane Lighter,” “Butane Torch,” “Cigarette Roller,” and “Cigarette Case.” See id. The Panel notes that in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), the panel concluded that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may have been in direct competition with a complainant, did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Similarly, in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel held that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant. In the instant case, the Panel finds that the disputed domain names resolve to a website that hosts links to various third-party websites offering cigarette-related products. Under the foregoing precedent, regardless of whether these third-party websites directly compete with Complainant, the Panel holds that Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iii) because Respondent is diverting customers “away from Complainant’s legitimate business to <newportecigarettes.com> and <newportelectroniccigs.com> to promote the unauthorized sale of NEWPORT cigarettes.” The Panel observes that based on the screenshots provided by Complainant, the website resolving from both of the disputed domain names does not appear to promote the sale of cigarettes. See Complainant’s Exhibit 2. However, the Panel determines that the website resolving from both of the disputed domain names displays links that advertise cigarette-related products such as lighters, cigarette rollers, and cigarette cases. See id. Previous panels have found that a respondent’s use of a disputed domain name constitutes bad faith disruption of a complainant’s business where the at-issue website contains links to competitors of the complainant. See, e.g., 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).”). Accordingly, the Panel determines that the third-party suppliers of cigarette-related products such as lights, rollers, and cases are direct competitors of Complainant, and it holds that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Complainant next suggests that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv) because both of the disputed domain names fully incorporate Complainant’s NEWPORT mark and are thus likely to mislead Internet users seeking products under Complainant’s mark. Complainant further suggests that the disputed domain names resolve to a website that promotes the unauthorized sale of NEWPORT cigarettes, and that Respondent is improperly profiting therefrom. As discussed above, the Panel observes that based on the screenshots provided by Complainant, the website resolving from both of the disputed domain names does not appear promote the sale of cigarettes. See Complainant’s Exhibit 2. However, the Panel determines that the website resolving from both of the disputed domain names displays links that advertise cigarette-related products such as lighters, cigarette rollers, and cigarette cases. See id. Previous panels have presumed that a respondent attains a commercial benefit by promoting hyperlinks that are unrelated or related to Complainant’s business. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and 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 prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). In the instant proceeding, Complainant has submitted evidence that the disputed domain names promote hyperlinks to various third-party websites that offer cigarette-related products. Under the foregoing precedent, the Panel presumes that Respondent is commercially benefitting from its promotion of these hyperlinks in the form of click-through fees. Therefore, the Panel determines that the disputed domain names are likely to mislead Internet users for Respondent’s commercial gain, and it holds that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent has demonstrated bad faith registration and use of the <newportecigarettes.com> and <newportelectroniccigs.com> domain names under Policy ¶ 4(a)(iii), because Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the NEWPORT mark. Complainant argues that Respondent’s actual knowledge can be inferred due to the extreme notoriety of the cigarettes sold under Complainant’s NEWPORT mark, which are the number one selling menthol cigarette in the United States. The Panel notes that in Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), a previous panel inferred that the respondent had actual notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity, and held that the respondent’s actual notice of the marks was evidence of the respondent’s bad faith under Policy ¶ 4(a)(iii). The Panel also reasonably concludes that the disputed domain name displays links that appear to be related to Complainant’s business of selling cigarettes. See Complainant’s Exhibit 2 (a screenshot showing that both of the disputed domain names resolve to a website that displays links to cigarette-related products including lighters, rollers, and cases). The Panel notes that in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), a previous panel inferred that respondent had actual notice of the complainant’s mark since the link between the complainant’s mark and the content advertised on the respondent’s website was so obvious that respondent “must have known about the complainant’s mark when it registered the subject domain name.” Under the foregoing precedent, the Panel determines that Complainant’s NEWPORT mark is extremely popular or that there is an obvious link between the mark and the content on the at-issue website, the Panel infers that Respondent had actual knowledge of Complainant’s NEWPORT mark. Such an inference would support a finding of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <newportecigarettes.com> and <newportelectroniccigs.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  October 3, 2013

 

 

 

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