Lorillard Licensing Company, LLC v. Fashion Group Geneve / Linda Bjorvin
Claim Number: FA1304001495821
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Fashion Group Geneve / Linda Bjorvin (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newporttobaccofans.com>, registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2013; the National Arbitration Forum received payment on April 22, 2013.
On April 23, 2013, CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <newporttobaccofans.com> domain name is registered with CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the CLICK REGISTRAR, INC. d/b/a PUBLICDOMAINREGISTRY.COM 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 April 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@newporttobaccofans.com. Also on April 24, 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 May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent is in no way affiliated with Complainant.
ii. Respondent has apparently used this disputed domain name for commercial gain to mislead and divert consumers in the unauthorized sale of cigarettes using Complainant’s NEWPORT marks. Respondent’s <newporttobaccofans.com> resolves to a website that contains a personal blog promoting NEWPORT cigarettes and hyperlinks to a variety of competing third-party websites where readers can go to purchase the product.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <newporttobaccofans.com> in order to redirect customers to competitors of Complainant amounts to use of the disputed domain name in bad faith.
ii. Clearly, the only reason Respondent registered <newporttobaccofans.com> was because the name contained Complainant’s famous NEWPORT trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its NEWPORT mark.
2. Respondent’s <newporttobaccofans.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 contends that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services. Complainant contends that it is the owner of trademark registrations with the USPTO for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978). See Complainant’s Annex 5. The Panel notes that although Respondent appears to reside in Switzerland, the Panel finds that it is irrelevant whether Complainant has registered its trademark in the country of Respondent’s residence under Policy ¶ 4(a)(i). See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel therefore holds that Complainant’s registration of the NEWPORT mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <newporttobaccofans.com> is confusingly similar to Complainant’s marks, as it reproduces the NEWPORT mark in its entire. Complainant first argues that the addition of the descriptive term “tobacco” and the generic term “fans” does not distinguish the disputed domain name sufficiently from the NEWPORT marks or the product Complainant sells using its NEWPORT marks. The Panel agrees that Respondent’s addition of generic or descriptive terms to a mark does not distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because 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)). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel determines that Respondent’s addition of a gTLD to a domain name does not eliminate confusing similarity pursuant to Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <newporttobaccofans.com> is confusingly similar to Complainant’s NEWPORT mark under 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 asserts that Respondent is in no way affiliated with Complainant. Complainant argues that at no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain name website referring to Complainant’s goods or services. Complainant contends that Respondent also has not attempted to file any trademark applications for the mark NEWPORT in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that the WHOIS information identifies “Fashion Group Geneve / Linda Bjorvin” as the registrant of the disputed domain name. See Complainant’s Annex 1. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent has apparently used this disputed domain name for commercial gain to mislead and divert consumers in the unauthorized sale of cigarettes using Complainant’s NEWPORT marks. Complainant argues that Respondent’s <newporttobaccofans.com> resolves to a website that contains a personal blog promoting NEWPORT cigarettes and hyperlinks to a variety of competing third-party websites where readers can go to purchase the product. See Complainant’s Annex 2. The Panel finds that Respondent’s use of the disputed domain name to host a personal blog that features hyperlinks to Complainant’s competitors is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant contends that Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <newporttobaccofans.com> in order to redirect customers to competitors of Complainant amounts to use of the disputed domain name in bad faith. Complainant asserts that Internet users are likely to be confused by a similar domain name and attracted to the linked websites looking to purchase NEWPORT cigarettes. Complainant argues that Respondent’s disputed domain name resolves to a website that contains a blog promoting NEWPORT cigarettes and providing hyperlinks to competing third-party websites. See Complainant’s Annex 2. Thus, the Panel determines that Respondent’s use of the disputed domain name to provide competing hyperlinks demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant argues that clearly, the only reason Respondent registered <newporttobaccofans.com> was because the name contained Complainant’s famous NEWPORT trademark. Complainant contends that Respondent registered the disputed domain name nearly 56 years after Complainant began using its NEWPORT mark, and 43 years after Complainant obtained its first registration of the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newporttobaccofans.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 6, 2013
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