Lorillard Licensing Company, LLC v. Natalia Gerdt
Claim Number: FA1308001515867
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Natalia Gerdt (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buying-duty-free-newport-cigarettes.info>, registered with GoDaddy.com, LLC.
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 21, 2013; the National Arbitration Forum received payment on August 21, 2013.
On August 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <buying-duty-free-newport-cigarettes.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 message addressed to all entities and persons listed on Respondent’s registration as tech-nical, administrative, and billing contacts, and to postmaster@buying-duty-free-newport-cigarettes.info. Also on August 26, 2013, the Written Notice of the Com-plaint, 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 uses the NEWPORT mark to promote the marketing of cigarettes and tobacco goods.
Complainant holds a registration for the NEWPORT trademark, on file with the United States Patent and Trademark Office ("USPTO") as Reg. No. 2,600,870, registered on July 30, 2002.
Respondent registered the <buying-duty-free-newport-cigarettes.info> domain name on November 20, 2012.
This domain name is confusingly similar to the NEWPORT mark.
Respondent is in no way affiliated with Complainant, and Respondent has never obtained a license or other approval to use the NEWPORT mark.
Respondent uses the <buying-duty-free-newport-cigarettes.info> domain name to host a parked website of hyperlink advertisements.
Respondent profits each time a user clicks on one of these hyperlinks.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the NEWPORT mark when Respondent registered the contested 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 the NEWPORT trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … 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 Russia). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <buying-duty-free-newport-cigarettes.info> domain name is confusingly similar to the NEWPORT trademark. The domain name contains the NEWPORT mark in its entirety, adding the terms “cigarettes,” “buying” and “duty-free,” which are descriptive of an aspect of Complainant’s business, plus hyphenation and the generic top-level domain (“gTLD”) “.info.” 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 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.
See also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that the addition of generic terms to a complainant’s HARRY POTTER mark in a respondent’s domain names <shop4harrypotter.com> and <shopforharrypotter.com> failed to alleviate the confusing similarity between the mark and the domain names).
And, as to the addition of generic or descriptive terms to the mark of another in creating a domain name where such additions relate to the business of a UDRP complainant, see Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance” to a complainant’s AIG mark failed to differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business).
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 is in no way affiliated with Complainant, that Respondent has never obtained a license or other approval to use the NEWPORT mark. More-over, the WHOIS information for the <buying-duty-free-newport-cigarettes.info> domain name identifies the registrant only as “Natalia Gerdt,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquir-ed rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), a panel there finding that when there was little information available in the record as to a respondent’s identity, the question of rights or interests under Policy ¶ 4(c)(ii) must be decided on the available WHOIS information.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <buying-duty-free-newport-cigarettes.info> domain name to host a parked website offering hyperlink advertisements to generate click-through fee income. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent’s use of a domain name which was confusingly similar to the mark of another in order to offer links to websites marketing goods and services unrelated to the business of a UDRP complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
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 dis-puted <buying-duty-free-newport-cigarettes.info> domain name in the manner alleged in the Complaint disrupts Complainant’s business. This stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the website resolving from a disputed domain name to divert Internet users to the websites of a UDRP complainant’s commer-cial competitors was proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent’s <buying-duty-free-newport-cigarettes.info> domain name, which is confusingly similar to Complain-ant’s NEWPORT trademark, to profit from the operation of the resolving website by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), finding that a respondent’s use of a contested domain name to accrue advertising revenue suggested bad faith registration and use of the domain name under Policy ¶ 4(b)(iv), where Internet users who visited the domain name were likely to believe that a UDRP complain-ant and its mark were endorsers of the hyperlinked content.
Finally, under this head of the Policy, the evidence is persuasive that Respond-ent knew of Complainant and its rights in the NEWPORT trademark when it registered the <buying-duty-free-newport-cigarettes.info> domain name. This is independent proof of bad faith in the registration of the domain name. See Uni-vision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when registering the 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 <buying-duty-free-newport-cigarettes.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 2, 2013
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