Lorillard Licensing Company, LLC v. teng long / englong t
Claim Number: FA1210001467914
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is teng long / englong t (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usnewportcigarettes.com>, registered with Shanghai Yovole Networks, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 18, 2012; the National Arbitration Forum received payment October 18, 2012. The Complainant was submitted in both English and Chinese.
On October 24, 2012, Shanghai Yovole Networks, Inc. confirmed by e-mail to the National Arbitration Forum that the <usnewportcigarettes.com> domain name is registered with Shanghai Yovole Networks, Inc. and that Respondent is the current registrant of the name. Shanghai Yovole Networks, Inc. verified that Respondent is bound by the Shanghai Yovole Networks, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 30, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 19, 2012, 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@usnewportcigarettes.com. Also on October 30, 2012, the Chinese language 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 December 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
Respondent did not submit a Response.
a) The Panel notes that Respondent registered the <usnewportcigarettes.com> domain name on June 2, 2012.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. The Panel has reviewed the applicable rules on language of the proceedings under the UDRP:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The disputed domain name contains Complainant’s protected mark.
The domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interests in a domain name containing Complainant’s protected mark.
The Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar:
Complainant contends that it has rights in the NEWPORT mark. Complainant asserts that it uses the NEWPORT mark to promote and sell cigarettes and related goods. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered December 12, 1978). See Complainant’s Annex 4. Registration of a mark with a trademark authority, irrespective of whether or not the respondent resides in that entity’s jurisdiction, satisfies the required showing under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, this Panel finds that Complainant has rights in the NEWPORT mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <usnewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark. Complainant notes that Respondent merely adds the geographic term “us” denoting “United States,” the descriptive term “cigarettes,” and the gTLD “.com.” Addition of geographic and/or descriptive terms does not negate a finding of confusing similarity. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), determined that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <usnewportcigarettes.com> domain name is confusingly similar to Complainant’s NEWPORT mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 contends that Respondent has no rights to or legitimate interests in the <usnewportcigarettes.com> domain name. Complainant asserts that Respondent is not in any way affiliated with Complainant, and that Complainant has not authorized or licensed Respondent to use the NEWPORT mark. According to Complainant, Respondent also never attempted to register rights reflecting the disputed domain name nor any variation of it. The Panel notes that the WHOIS record for the <usnewportcigarettes.com> domain name lists “teng long / englong t” as the domain name registrant. One way to demonstrate rights or legitimate interests in a disputed domain name is to show that a respondent is commonly known by a disputed domain name, often done by referencing the WHOIS record or authorization or lack thereof from by the complainant. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by Complainant’s mark, and thus does not have rights or legitimate interests in, the <usnewportcigarettes.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s lack of rights and legitimate interests is obvious based on Respondent’s use of the <usnewportcigarettes.com> domain name. Complainant demonstrates that the <usnewportcigarettes.com> domain name resolves to a website where Respondent operates an online store selling products identical to those that Complainant offers, i.e., cigarettes. See Complainant’s Annex 2. Panels have held that the use of a disputed domain name to sell competing products is not a use protected by Policy ¶¶ 4(c)(i) or 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <usnewportcigarettes.com> domain name is 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Responded registered and is using the <usnewportcigarettes.com> domain name in bad faith. Complainant argues that the disputed domain name is disruptive to Complainant’s business. According to Complainant, Respondent’s only reason for registering the <usnewportcigarettes.com> domain name is because the name contains the famous NEWPORT mark, allowing Respondent to divert cigarette consumers. Domain names are disruptive where the respondent-registrant uses the domain to host a competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the <usnewportcigarettes.com> domain name disrupts Complainant’s business by facilitating competition, which supports findings of bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iii).
Next, Complainant alleges that Respondent’s bad faith is evident under Policy ¶ 4(b)(iv). Complainant contends that Respondent is using the disputed domain name to mislead and divert consumers for commercial gain from the unauthorized sale of cigarettes by using the NEWPORT mark. Respondent is attempting to trade off the goodwill created by Complainant in the NEWPORT mark, Complainant argues. Therefore, the Panel finds that Respondent registered and is using the <usnewportcigarettes.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in
bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usnewportcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 18, 2012
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