Lorillard Licensing Company, LLC v. Anne S. Howard / Anne S. Howard
Claim Number: FA1309001521080
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Anne S. Howard / Anne S. Howard (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buynewportcigarettes.com>, registered with TODAYNIC.COM, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2013; the National Arbitration Forum received payment on September 24, 2013.
On September 29, 2013, TODAYNIC.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <buynewportcigarettes.com> domain name is registered with TODAYNIC.COM, INC. and that Respondent is the current registrant of the name. TODAYNIC.COM, INC. has verified that Respondent is bound by the TODAYNIC.COM, INC. 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 September 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@buynewportcigarettes.com. Also on September 30, 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 23, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns and uses the NEWPORT mark, and has done so since 1956. Complainant owns trademark registrations for the NEWPORT and design mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,191,816 registered March 9, 1982). See Complainant’s Exhibit 5. Complainant uses the NEWPORT mark to designate its famous cigarettes and related goods and services. Complainant is the third-largest tobacco company in the United States, and continuously and actively promotes its NEWPORT mark and products.
Respondent registered the <buynewportcigarettes.com> domain name, which is confusingly similar to Complainant’s mark, as it is composed of a combination of Complainant’s NEWPORT mark and the words “buy” and “cigarettes.” Respondent has no rights or legitimate interests in the disputed domain name, and is in no way associated with Complainant’s business. Respondent is not commonly known by the <buynewportcigarettes.com> domain name and has never sought a license to use the mark in a domain name. Respondent uses the domain name to promote the sale of cigarettes using Complainant’s NEWPORT mark without authorization, and displays hyperlinks to competing third-party websites in order to mislead and divert consumers to the resolving webpage. Respondent’s bad faith registration and use is apparent, because Respondent both disrupts Complainant’s business and improperly attracts Internet users to the website in order to generate sales on Respondent’s own behalf. Further, Respondent has actual or constructive knowledge of Complainant’s rights in the NEWPORT marks at the time it registered the disputed domain name.
1. Respondent’s <buynewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <buynewportcigarettes.com> domain name.
3. Respondent registered or used the <buynewportcigarettes.com> domain name 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 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.”).
Complainant argues that it owns the NEWPORT mark, and provides evidence of its many trademark registrations with the USPTO using the NEWPORT name, including the NEWPORT mark itself (e.g., Reg. No. 1,191,816 registered March 9, 1982). Previous panels have agreed that a USPTO registration satisfies the Policy in demonstrating rights in a mark. 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 BLIZZARD mark.”). The Panel finds similarly and finds that Complainant has rights in the NEWPORT mark due to its USPTO trademark registration, pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <buynewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark, contending that the domain name contains the word “buy,” as well as the term “cigarettes,” which are descriptive of the products Complainant sells. The Panel finds that by using the NEWPORT mark in conjunction with the words “buy” and “cigarettes,” the <buynewportcigarettes.com> domain name is confusingly similar to the mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel also takes note that the domain name includes the generic top-level domain (“gTLD”) “.com,” and finds that such an inclusion does not prevent a finding of confusing similarity between the mark and the domain. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel concludes that the alterations to the mark do not create a distinct domain name, and finds that the <buynewportcigarettes.com> domain name is confusingly similar to the NEWPORT mark, as contemplated by 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); 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 alleges that Respondent never sought or obtained a license from Complainant to use the NEWPORT mark, nor has Respondent attempted to file any trademark applications for the mark. Complainant contends that even if Respondent had attempted to apply for such trademarks, doing so would be objectionable since Complainant owns the NEWPORT marks. The Panel notes that the WHOIS information corresponding with the <buynewportcigarettes.com> domain name indicates “Anne S. Howard / Anne S. Howard” is the domain name’s registrant. The Panel agrees that without evidence of Respondent’s ownership of a mark incorporating the term NEWPORT, and in view of the WHOIS information, which demonstrates a conflict between the registrant name and the domain name, the Respondent is unlikely to be commonly known by the <buynewportcigarettes.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant further contends that Respondent does not use the <buynewportcigarettes.com> domain name to make a bona fide offering of goods or services; rather Respondent uses the domain name for commercial gain to mislead and divert consumers by promoting the unauthorized sale of cigarettes using Complainant’s NEWPORT mark. Complainant elaborates on Respondent’s use, stating that Respondent displays hyperlinks at its resolving website that lead to third-party competing websites. The Panel observes that the links include offers for cigarette products, including “Cigarettes Coupons,” “Cheap Cigarettes,” and “Cigarettes Discount,” as well as entirely unrelated links, such as “Newport Brass Faucets” and “Skip Hire Newport.” The Panel finds that by displaying links to both related and unrelated entities, the disputed domain name is not used in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, thereby demonstrating Respondent’s lack of rights or legitimate interests in the domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent intentionally uses the <buynewportcigarettes.com> domain name to link Complainant’s consumers to competitors of Complainant by offering hyperlinks to those businesses’ websites. Complainant asserts that Respondent registered the <buynewportcigarettes.com> domain name in order to improperly trade off of the goodwill associated with the NEWPORT marks. The Panel determines that by posting competing hyperlinks at the resolving website, Respondent fulfills a showing of bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent selected to register a domain name using Complainant’s NEWPORT mark in order to cause confusion to consumers as to the affiliation between Complainant and the <buynewportcigarettes.com> domain name. Complainant accuses Respondent of reaping a commercial gain as a result of its use of the domain name, demonstrating bad faith registration and use. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated that the respondent’s use of the domain name to operate a website featuring links to both competing and non-competing commercial websites, which resulted in the respondent’s receipt of referral fees, provided evidence of the respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The Panel finds that similar circumstances present themselves in the present case, and concludes that Respondent’s Policy ¶ 4(b)(iv) bad faith registration and use of the <buynewportcigarettes.com> domain name are clear as a result of Respondent’s conduct.
Finally, Complainant alleges that Respondent had actual or constructive knowledge of Complainant’s rights in the NEWPORT mark when it registered the <buynewportcigarettes.com> domain name, arguing that Complainant’s long-standing prior use of the mark provided Respondent with notice of the mark. The Panel disregards any reference to Respondent’s constructive knowledge, as previous panels have determined mere constructive knowledge is insufficient to find bad faith registration under the Policy. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). The Panel also notes that by using the mark in conjunction with a term descriptive of Complainant’s products, namely, “cigarettes,” Respondent had actual notice of Complainant’s rights in the NEWPORT mark at the time it registered the domain name, and thus registered the <buynewportcigarettes.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buynewportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 5, 2013
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