Lorillard Licensing Company, LLC v. hua kun / hua kun / kun hua / hua kun
Claim Number: FA1404001552252
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is hua kun / hua kun / kun hua / hua kun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <newportcigarettescoupons.com>, registered with Bizcn.com, Inc.
The domain names at issue are <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, and <newportcigarettes wholesale2013.com>, registered with Xin Net Technology Corporation.
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.
John J. Upchurch 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, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettescoupons.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 3, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, and <newportcigarettes wholesale2013.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 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@newportcigarettes2014.com, postmaster@wholesalenewport cigarettestore.com, postmaster@newportcigaretteswholesale2013.com, and postmaster@newportcigarettescoupons.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 John J. Upchurch 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 names be transferred from Respondent to 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com>, and <newportcigarettescoupons.com> domain names are confusingly similar to Complainant’s NEWPORT mark.
i. Respondent has no rights or legitimate interests in the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent’s disputed domain names resolve to a website where Respondent operates an unauthorized sale of cigarettes.
i. Respondent registered and is using the disputed domain names in bad faith.
ii. Respondent’s disputed domain name resolve to a website where Respondent operates an unauthorized sale of cigarettes.
iii. Respondent is using the disputed domain names to mislead and divert customers away from Complainant’s legitimate business to <newportcigarettes2014.com>, <wholesalenewport cigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> to conduct unauthorized sales of cigarettes.
iv. Respondent must have had actual or constructive knowledge of Complainant’s rights in the NEWPORT marks when Respondent registered the disputed domain names in 2013.
i. <newportcigarettes2014.com> domain name on November 15, 2013;
ii. <wholesalenewportcigarettestore.com> domain name on November 15, 2013;
iii. <newportcigaretteswholesale2013.com> domain name on November 8, 2013;
<newportcigarettescoupons.com> domain name on November 23, 2013.
1. Respondent’s <newportcigarettes2014.com>, <wholesalenewport cigarettestore.com>, <newportcigaretteswholesale2013.com> and <newportcigarettescoupons.com> domain names are confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com> and <newportcigarettes coupons.com> domain names.
3. Respondent registered or used the <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com> and <newportcigarettescoupons.com> 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 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 11. 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com>, and <newportcigarettescoupons.com> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant argues that the addition of the descriptive term “cigarettes” or “cigarette” is insufficient to distinguish the disputed domain names from the NEWPORT mark. The Panel determines that Respondent’s inclusion of a descriptive term does not differentiate the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant asserts that Respondent has added the generic terms “store,” “wholesale,” or “coupons” to Complainant’s NEWPORT mark. The Panel notes that Respondent’s addition of generic terms is inconsequential to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel notes that Respondent adds the numerals “2013” or “2014” to Complainant’s mark. The Panel determines that Respondent’s inclusion of numerals does not negate a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). 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 holds that Respondent’s <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names are 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names. 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 names 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 “hua kun / hua kun / kun hua / hua kun” is the registrant of the disputed domain name. See Complainant’s Annexes 1–4. Consequently, the Panel concludes that Respondent is not commonly known by the <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com>, and <newportcigarettescoupons.com> domain names resolve to a website where Respondent operates an unauthorized sale of cigarettes. Complainant contends that Respondent is using the disputed domain names to offer an unauthorized online store in which Internet users can purchase products identical to the products Complainant offers. See Complainant’s Annexes 5 - 8. 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 <newportcigarettes2014.com>, <wholesalenewport cigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com>, and <newportcigarettescoupons.com> domain names resolve to a website where Respondent operates an unauthorized sale of cigarettes. The Panel notes that Respondent is using the disputed domain names to offer Complainant’s cigarettes. See Complainant’s Annexes 5 - 8. The Panel finds that Respondent is using the disputed domain names to sell Complainant’s products, and 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 names to mislead and divert customers away from Complainant’s legitimate business to <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> to conduct unauthorized sales of NEWPORT cigarettes. See Complainant’s Annexes 5 -8. The Panel observes that Respondent may commercially benefit through its sale of Complainant’s products on its disputed domain names. 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names 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 <newportcigarettes2014.com>, <wholesalenewport cigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> domain names in 2013. Complainant argues that Respondent registered the disputed domain names 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 <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigaretteswholesale2013.com>, and <newportcigarettescoupons.com> 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).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigarettes2014.com>, <wholesalenewportcigarettestore.com>, <newportcigarettes wholesale2013.com>, and <newportcigarettescoupons.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 16, 2014
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