Lorillard Licensing Company, LLC v. Yi hong / hong yi
Claim Number: FA1404001552249
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Yi hong / hong yi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportcartons.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2014; the National Arbitration Forum received payment on April 2, 2014. The Complaint was submitted in both Chinese and English.
On April 3, 2014, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcartons.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 11, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 1, 2014 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@cheapnewportcartons.com. Also on April 11, 2014, 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 May 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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.
Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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 shall be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Lorillard Licensing Company, LLC, uses its NEWPORT mark in connection with its famous cigarettes and related goods and services.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876, registered December 12, 1978).
iii. Respondent’s <cheapnewportcartons.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s disputed domain name resolves to a website where Respondent operates an unauthorized sale of cigarettes.
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent’s disputed domain name resolves to a website where Respondent operates an unauthorized sale of cigarettes.
iii. Respondent is using the disputed domain name to mislead and divert customers away from Complainant’s legitimate business to <cheapnewportcartons.com> to conduct unauthorized sales of NEWPORT cigarettes.
iv. Respondent must have had actual or constructive knowledge of Complainant’s rights in the NEWPORT marks when Respondent registered the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
2. Respondent registered the <cheapnewportcartons.com> domain name on February 28, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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 asserts that it uses its NEWPORT mark in connection with its famous cigarettes and related goods and services. Complainant alleges 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 resides within China, Complainant is not required to register its mark in the country of Respondent’s residence pursuant to 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). Therefore, the Panel holds that Complainant’s registration of the NEWPORT mark with the USPTO demonstrates rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims that Respondent’s <cheapnewportcartons.com> domain name is confusingly similar to Complainant’s NEWPORT mark. Complainant asserts that Respondent merely adds the descriptive words “cheap” and “cartons” to Complainant’s NEWPORT mark. The Panel holds that Respondent’s addition of descriptive words to Complainant’s mark does nothing to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Finally, Complainant argues that the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) determination. The Panel agrees with Complainant and finds that Respondent’s inclusion of a gTLD to a mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <cheapnewportcartons.com> domain name is confusingly similar to Complainant’s NEWPORT mark pursuant to 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 that Respondent is not commonly known by the <cheapnewportcartons.com> domain name. Complainant alleges that Respondent did not seek or obtain a license from Complainant to use the NEWPORT mark or to post content on the disputed domain name referring to Complainant’s goods or services. Complainant also argues that Respondent has never attempted to file a trademark application for the NEWPORT mark. Complainant alleges that Respondent is not affiliated with Complainant in any way. The Panel notes that the WHOIS record indicates that “Yi hong / hong yi” is the registrant of the disputed domain name. See Complainant’s Annex 1. Consequently, the Panel concludes that Respondent is not commonly known by the <cheapnewportcartons.com> 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 argues that Respondent’s <cheapnewportcartons.com> domain name resolves to a website where Respondent operates an unauthorized sale of cigarettes. Complainant contends that Respondent is using the disputed domain name to offer an unauthorized online store in which Internet users can purchase products identical to the products Complainant offers. See Complainant’s Annex 2. In Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), the panel found no bona fide offering of goods or services where respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both complainant’s products and those of complainant’s competitors. Therefore, the Panel holds that Respondent is not using the <cheapnewportcartons.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent’s <cheapnewportcartons.com> domain name resolves to a website where Respondent operates an unauthorized sale of cigarettes. The Panel notes that Respondent is using the disputed domain name to offer Complainant’s cigarettes. See Complainant’s Annex 2. As the Panel finds that Respondent is using the disputed domain name to sell Complainant’s products, the Panel finds that Respondent is disrupting Complainant’s business, showing bad faith under 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).”).
Complainant asserts that Respondent is using the disputed domain name to mislead and divert customers away from Complainant’s legitimate business to <cheapnewportcartons.com> to conduct unauthorized sales of NEWPORT cigarettes. See Complainant’s Annex 2. The Panel observes that Respondent may commercially benefit through its sale of Complainant’s products on its disputed domain name. In Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001), the panel found bad faith where respondent used the disputed domain name to sell complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with complainant. Therefore, the Panel determines that Respondent’s use and registration of the <cheapnewportcartons.com> domain name shows that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had actual or constructive knowledge of Complainant’s rights in the NEWPORT marks when Respondent registered the <cheapnewportcartons.com> domain name in 2014. Complainant argues that Respondent registered the disputed domain name fifty-eight years after Complainant began using its NEWPORT mark, and forty-four years after Complainant obtained its first registration of the NEWPORT mark with the USPTO. 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 NEWPORT mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <cheapnewportcartons.com> 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 <cheapnewportcartons.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 17, 2014
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