Lorillard Licensing Company, LLC v. La Monde / Society FilmWorks
Claim Number: FA1311001529463
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is La Monde / Society FilmWorks (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigars.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013.
On November 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <newportcigars.com> 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2013 by which Respondent could file a Response to the Complaint.
A Response was received by the Forum on December 4, 2013 and was found to be deficient. The Forum found the Response to be deficient as it was received after the response deadline as expressed in Supplemental Rule 5(a).
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the owner of the NEWPORT mark, used in connection with cigarettes and related products. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the NEWPORT mark (Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Annex 5. The Complainant is the registrant of more than 20 trademarks which include NEWPORT as a primary portion of the mark.
The Complainant argues that the <newportcigars.com> domain name is confusingly similar to the NEWPORT mark. The disputed domain name is merely a combination of the NEWPORT mark, a term similar to the products promoted by Complainant, and a generic top-level domain (“gTLD”).
The Complainant states that the Respondent is not licensed to use the NEWPORT mark in any way, and Respondent is not affiliated with Complainant. It also claims that Respondent uses the <newportcigars.com> domain name to display hyperlinks to competing third-party websites.
The Complainant alleges that the Respondent’s display of links to competing third-party websites on the disputed domain name disrupts Complainant’s business and that Respondent only registered the disputed domain name because of its incorporation of the NEWPORT mark. Respondent, the Complainant maintains, is attempting to trade off of the goodwill associated with the NEWPORT mark.
Finally, the Complainant alleges that Respondent’s registration of a domain name incorporating Complainant’s NEWPORT mark, to display competing links, fifty-six years after Complainant began using the mark clearly demonstrates that Respondent had knowledge of Complainant’s rights in and to the NEWPORT mark.
B. Respondent
Respondent’s Response was deemed deficient by the Forum for failing to comply with ICANN Rule #5 (a). However, even though the Response was deficient for not being filed in a timely manner, the Panel has decided to consider the deficient Response as it was filed one day late. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response”).
The Respondent claims that the purpose for obtaining the disputed domain name was to help drive traffic to Beach Cigar Lounge’s new website. Beach Cigar Lounge, it claims, is Newport’s destination retail store and lounge for the enjoyment of cigars. Respondent claims that it is not a manufacturer of cigarettes or cigarette products.
Respondent further claims that the <newportcigars.com> domain name is not identical or confusingly similar to the NEWPORT mark because the inclusion of “cigars” distinguishes the domain name from Complainant’s business.
Respondent claims that the Beach Cigar Lounge is operated in Newport Beach, California, and the term “Newport” is strictly geographical. Respondent alleges that consumers will know that as cigars are not sold under the NEWPORT mark and that the domain name implies cigars sold in the Newport geographic region, not cigarettes.
1. Complainant is the owner of the NEWPORT mark used on or in connection with the sale of cigarettes and related products as evidenced by its multiple trademark registrations maintained with the USPTO. Through its multiple trademark registrations and its 56 years of use, the NEWPORT mark has become a famous appellation of Complainant’s goods. The Respondent registered the disputed domain name <newportcigars.com> on October 25, 2012.
2. The <newportcigars.com> domain name is confusingly similar to the numerous NEWPORT marks. Respondent has no legitimate interests regarding the domain name.
3. The disputed domain name has been registered and is being used in bad faith.
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.
The Complainant has met this burden.
Complainant contends that it is the owner of the NEWPORT mark, used in connection with cigarettes and related products. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registration for the NEWPORT mark (Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Annex 5. As such, the Panel finds that the Complainant has rights in or to the NEWPORT mark under Policy ¶ 4(a)(i).
Complainant argues also that the <newportcigars.com> domain name is confusingly similar to the NEWPORT mark. Complainant notes that the disputed domain name is merely a combination of the NEWPORT mark, a term similar to the products promoted by Complainant, and a gTLD. When Complainant’s trademark is a famous appellation, merely adding a generic and very similar term to the domain name does not save the domain name from a finding of confusing similarity. 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)). Therefore, this Panel finds that Respondent’s <newportcigars.com> domain name is confusingly similar to the NEWPORT mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <newportcigars.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, this Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in or to the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)). As such, Respondent’s contentions regarding Policy ¶ 4(a)(i) are not persuasive.
Complainant asserts that Respondent has neither rights nor legitimate interests in or to the disputed domain name. Complainant states that Respondent is not licensed to use the NEWPORT mark in any way and that Respondent is not affiliated with Complainant. The Panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), concluded 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. The Panel notes that the WHOIS record for the <newportcigars.com> domain name lists “La Monde / Society FilmWorks” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent uses the <newportcigars.com> domain name to display hyperlinks to competing third-party websites. Complainant asserts that this is not a use which Policy ¶¶ 4(c)(i) and 4(c)(iii) protect, and past panels have agreed. 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)). Accordingly, the Panel finds that Respondent’s use of the <newportcigars.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent has registered and is using the <newportcigars.com> domain name in bad faith. Complainant illustrates in its Exhibit 2 that Respondent uses the disputed domain name to display links to competing third-party websites in a manner that disrupts Complainant’s business. This Panel finds instructive the decision in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), where the Panel concluded 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 represented bad faith registration and use under Policy ¶ 4(b)(iii). As such, this Panel finds that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant next contends that Respondent only registered the disputed domain name because of its incorporation of the NEWPORT mark, and Respondent is attempting to trade off of the goodwill associated with the NEWPORT mark. Complainant states that the <newportcigars.com> domain name resolves to a website which displays links to the competitors of Complainant. This Panel finds bad faith registration and use by Respondent because it holds that Respondent registered and uses the <newportcigars.com> domain name in an attempt to take commercial advantage of Internet users’ mistakes by creating a likelihood of confusion pursuant to 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).
Respondent’s registration of a domain name incorporating Complainant’s NEWPORT mark, to display competing links, fifty-six years after Complainant began using the now famous mark clearly demonstrates that Respondent had actual or constructive knowledge of Complainant’s rights in and to the NEWPORT mark. Even though constructive notice alone may not be enough to support a fining of bad faith, due to the fame of Complainant’s mark, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights in or to the mark NEWPORT.
Therefore, this Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 <newportcigars.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 16, 2013
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