Lorillard Licensing Company, LLC v. safd / sdfdf; sdf / sdf d; sd / d df
Claim Number: FA1311001530394
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is safd / sdfdf ; sdf / sdf d; sd / d df (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com>, registered with Xin Net Technology Corporation.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2013; the National Arbitration Forum received payment on November 18, 2013. The Complaint was received in both Chinese and English.
On November 18, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 25, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 16, 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@newportcigaretteswholesale.cc, postmaster@cheapnewportcigaretteswholesale.cc, and postmaster@marlboroandnewportcigarettes.com. Also on November 25, 2013, 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 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ho Hyun Nahm 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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
a) Complainant is the third largest tobacco company in the United States.
b) Complainant has rights in the NEWPORT mark, used in connection with the production, distribution, and sales of cigarettes. Complainant owns registrations for the NEWPORT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,108,876 registered Dec. 12, 1978).
c) Respondent’s <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names are confusingly similar to Complainant’s NEWPORT mark. All the disputed domain names incorporate Complainant’s mark in its entirety. The disputed domain names add the terms “cheap,” “wholesale,” and “and”. The <marlboroandnewportcigarettes.com> domain name includes the term “Marlboro,” which is a third party’s trademark for a similar product. The disputed domain names also include a generic top-level domain (“gTLD”) and the country-code top-level domain (“ccTLD”) (“.cc”).
d) Respondent does not have any rights or legitimate interests in the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names.
a. Complainant has not authorized Respondent to use its NEWPORT mark in any way.
b. Respondent is using the dispute domain names for the unauthorized sale of Complainant’s cigarettes. All three disputed domain names resolve to websites hosting online stores for Internet users to purchase products identical to Complainant’s products. See Complainant’s Exhibits 5-7.
e) Respondent registered and is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names in bad faith.
a. Respondent’s sale of Complainant’s products via all three disputed domain names is disrupting Complainant’s business. See Complainant’s Exhibits 5-7.
b. Respondent is attempting to attract and mislead Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s NEWPORT mark. Specifically, Respondent is obtaining commercial gain through the unauthorized sale of Complainant’s products. See Complainant’s Exhibits 5-7.
c. Respondent had constructive and actual knowledge of the NEWPORT mark when registering and using the domain names, as underscored by explicit use of the NEWPORT mark throughout the domain names’ websites.
f) All of the listed registrants for the domain names are the same entity. All the entities share the same “eootop@gmail.com” e-mail address. The websites that resolve from each of the disputed domain names are nearly identical in content and purpose.
B. Respondent
a) Respondent failed to submit a Response in this proceeding. Respondent registered the <newportcigaretteswholesale.cc> domain name on July 17, 2013, the <cheapnewportcigaretteswholesale.cc> domain name on July 19, 2013, and the <marlboroandnewportcigarettes.com> domain name on August 7, 2013.
LANGUAGE OF THE PROCEEDINGS
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant states that the WHOS record for all three disputed domain names lists an identical registrant email address, eootop@gmail.com. Further, Complainant notes that the disputed domain names were all registered within in a month of each other between July and August of 2013. Complainant argues that these facts, coupled with the fact that all three disputed domain names resolve to similar unauthorized online stores to purchase identical products, leads to the conclusion that all three disputed domain names were registered by the same person or entity.
It is of the Panel’s view that the consolidation of the disputed domain names against multiple respondents should be allowed where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In circumstances indicating that a single person or entity has registered multiple domain names using fictitious names, common control or ownership has been found. See Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188.
Previous panels have rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587.
Previous Panels have also found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”. CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites).
The Panel notes that the WHOS record for all three disputed domain names lists an identical registrant email address, eootop@gmail.com. The Panel further notes that the disputed domain names were all registered within in a month of each other between July and August of 2013. The Panel also observes that all three disputed domain names resolve to similar unauthorized online stores to purchase identical products.
Given the circumstances above, the Panel finds that (i) the disputed domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation of all of the disputed domain names into the current proceedings would be fair and equitable to all parties. Accordingly, the Panel believes that Complainant has sufficiently presented evidence demonstrating that the disputed domain names are commonly controlled by a single Respondent who is using multiple aliases. Therefore, the Panel determines to permit the consolidation of all the disputed domain names against multiple respondents in the current proceedings.
Complainant established that it had rights in the mark contained in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 it has rights in the NEWPORT mark, used in connection with the production, distribution, and sales of cigarettes. Complainant states it owns registrations for the NEWPORT mark with the USPTO (Reg. No. 1,108,876 registered Dec. 12, 1978). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in the NEWPORT mark pursuant to Policy ¶ 4(a)(i) via valid trademark registrations with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant alleges that Respondent’s <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant notes that all the disputed domain names incorporate Complainant’s mark in its entirety. Complainant states that the disputed domain names add the descriptive terms “cheap,” “wholesale,” as well as “and.” The Panel notes that the <newportcigaretteswholesale.cc> and <cheapnewportcigaretteswholesale.cc> domain names include the word “wholesale,” the <cheapnewportcigaretteswholesale.cc> includes the word “cheap,” and the <marlboroandnewportcigarettes.com> includes the word “and.” Complainant also observes that the <marlboroandnewportcigarettes.com> domain name includes the term “Marlboro,” which is a third party’s trademark for a similar product. Lastly, the Complainant notes that the disputed domain names also include a generic top-level domain (“gTLD”) or the country-code top-level domain (“ccTLDs”). First, the Panel finds that the addition of generic or descriptive terms to a trademark in a disputed domain name does not negate 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)). Next, the Panel finds that the addition of gTLDs or ccTLDS is irrelevant for the purpses of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). The Panel also agrees that merely tagging a third party’s trademark into the <marlboroandnewportcigarettes.com> domain name does not distinguish the domain name in a meaningful manner. See, e.g., G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim.”).Therefore, the Panel finds that Respondent’s <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names are 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 contends Respondent does not have any rights or legitimate interests in the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names. Complainant states it has not authorized Respondent to use its NEWPORT mark in any way. The Panel notes that the WHOIS record lists “d df” as the domain name registrant for the <marlboroandnewportcigarettes.com> domain name, “sdf d” as the domain name registrant for the <cheapnewportcigaretteswholesale.cc> domain name, and “sdfdf” as the domain name registrant for the <newportcigaretteswholesale.cc> domain name. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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, because Respondent was not authorized by Complainant to use the NEWPORT mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names for the unauthorized sale of Complainant’s cigarettes. Complainant states that all three disputed domain names resolve to websites hosting online stores for Internet users to purchase products identical to Complainant’s products. See Complainant’s Exhibits 5-7. In previous cases, panels have found that selling a complainant’s goods with Complainant’s permission shows that the respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that respondent’s unauthorized sale of complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii) because Respondent is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names to sell Complainant’s products without Complainant’s permission.
Complainant claims Respondent registered and is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names in bad faith. Complainant asserts that Respondent’s sale of Complainant’s products via all three disputed domain names is disrupting Complainant’s business. See Complainant’s Exhibits 5-7. In previous cases, panels have found that the sale of a complainant’s goods constitutes a bad faith disruption to Complainant’s business pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent is disrupting Complainant’s business by selling Complainant’s products, and therefore Respondent registered and is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant contends Respondent is attempting to attract and mislead Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s NEWPORT mark. Specifically, Complainant claims Respondent is obtaining commercial gain through the unauthorized sale of Complainant’s products. See Complainant’s Exhibits 5-7. Past panels have found that selling a complainant’s products via a confusingly similar domain name creates a likelihood of confusion with the complainant’s products from which the respondent commercially benefits. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). Therefore, the Panel finds that Respondent registered and is using the <newportcigaretteswholesale.cc>, <cheapnewportcigaretteswholesale.cc>, and <marlboroandnewportcigarettes.com> domain names in bad faith under Policy ¶ 4(b)(iv) because Respondent is engaged in the unauthorized sale of Complainant’s products.
Complainant finally argues that Respondent had constructive and actual knowledge of the NEWPORT mark when registering and using the domain names, as underscored by explicit use of the NEWPORT mark throughout the domain names’ websites. 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 names 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 <newportcigaretteswholesale.cc> and <cheapnewportcigaretteswholesale.cc> domain name be TRANSFERRED from Respondent to Complainant and that <marlboroandnewportcigarettes.com> domain name be deleted.
Ho Hyun Nahm, Panelist
Dated: December 30, 2013
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