Lorillard Technologies, Inc. v. Aman Singh
Claim Number: FA1311001528826
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Aman Singh (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluelectroniccigarette.net>, 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 November 7, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 7, 2013, GODADDY.COM, LLC confirmed by e-mail to the Nation-al Arbitration Forum that the <bluelectroniccigarette.net> domain name is regis-tered 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 November 8, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of November 29, 2013 by which Respondent could file a Response to the Complaint, via e-mail messages addressed to all entities and persons listed on Respondent’s regis-tration as technical, administrative, and billing contacts, and to the attention of postmaster@bluelectroniccigarette.net. Also on November 8, 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 December 2, 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 has for years used the BLU ECIGS trademark to market its elec-tronic cigarette products.
Complainant holds a registration for the BLU ECIGS trademark, which is on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 3,846,035, registered on September 7, 2010.
Respondent registered the contested <bluelectroniccigarette.net> domain name on October 1, 2013.
The domain name is confusingly similar to Complainant’s BLU ECIGS mark.
Respondent is not an affiliate, licensee or other authorized user of the BLU ECIGS mark.
Respondent uses the <bluelectroniccigarette.net> domain name to operate an unauthorized online store specializing in the sale of electronic cigarettes in competition with the business of Complainant.
Respondent attempts to profit from the likelihood that Internet users will confuse the competing products sold through the <bluelectroniccigarette.net> domain name with Complainant’s BLU ECIGS business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the <bluelectroniccigarette.net> domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the BLU ECIGS mark when Respondent registered the domain name.
Respondent both registered and uses the domain name in bad faith.
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 BLU ECIGS trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with … the United States Patent and Trademark Office (‘USPTO’).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the United Kingdom). See, for ex-ample, Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bluelectroniccigarette.net> domain name is confusingly similar to Complainant’s BLU ECIGS trademark. The do-main name contains the essence of the mark, with its spelling expanded to eliminate the abbreviations implicit in it, and with the addition of the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing sim-ilarity under the standards of the Policy. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
Moreover, the domain name is in effect no more than a translation of the abbrev-iations inherent in Complainant’s BLU ECIGS mark. In the circumstances here presented, translation of the mark of another in forming a domain name does not defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, D2005-1085 (WIPO January 2, 2006).
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 not an affiliate, licensee or other authorized user of the BLU ECIGS mark. Moreover, the pertinent WHOIS information identifies the regis-trant of the <bluelectroniccigarette.net> domain name only as “Aman Singh,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the <bluelectroniccigarette.net> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a UDRP respondent was not commonly known by the domain name <cigaraficionada.com>, and therefore failed to show that it had rights to or legit-imate interests in it as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent seeks to profit by using the <bluelectroniccigarette.net> domain name to operate an unauthorized online store specializing in the sale of electron-ic cigarettes in competition with the business of Complainant. This employment of the 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). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel there finding that there could be no bona fide offering of goods by means of a contested domain name, or legitimate noncommercial or fair use of that domain name, which was confusingly similar to the mark of a UDRP complainant, where the domain name was used to sell goods in competition with the business of that complainant.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
We are persuaded by the evidence that Respondent’s employment of the con-tested <bluelectroniccigarette.net> domain name to market electronic cigarettes in the manner described in the Complaint disrupts Complainant’s business. Un-der Policy ¶ 4(b)(iii), this stands as evidence of bad faith in the registration and use of the domain name. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a UDRP respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website).
We are also convinced by the evidence that Respondent’s use of the domain name, which is confusingly similar to Complainant’s BLU ECIGS trademark, demonstrates its intent to profit from confusion among Internet users as to the possibility of Complainant’s association with the domain name. This evidences bad faith registration and use of the domain name as provided in Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used the <dellcomputerssuck.com> domain name to divert Internet users to that re-spondent’s website, which offered computer products and services in competition with the business of a UDRP complainant).
Finally under this head of the Policy, we find the evidence persuasive that Re-spondent knew of Complainant and its rights in the BLU ECIGS mark when it registered the <bluelectroniccigarette.net> domain name. This is further proof of bad faith registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of that domain name’s registration).
The Panel thus 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 <bluelectroniccigarette.net> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 9, 2013
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