Lorillard Licensing Company, LLC v. Leonard Di Bari
Claim Number: FA1311001530385
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Leonard Di Bari (“Respondent”), represented by Stephen Holihan of Holihan & Associates, P.C., New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com>, registered with Godaddy.Com, LLC.
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 November 18, 2013; the National Arbitration Forum received payment on November 18, 2013.
On November 18, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 19, 2013, the Forum served the Complaint and all Annexes, including a 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@newportecig.com, postmaster@newportecigs.com, postmaster@newportecigs.net, postmaster@newport-ecigs.com, postmaster@newport-lights-ecigs.com, and postmaster@newportlights-ecigs.com. Also on November 19, 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.
A timely Response was received and determined to be complete on December 16, 2013.
A timely Additional Submission in Support of Complaint was received on December 20, 2013, and which was considered by the Panel in the rendering of the following decision.
On December 20, 2013, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant uses the NEWPORT mark in connection with its famous cigarettes and related goods and services. Complainant began using the NEWPORT mark continuously since 1956. Complainant’s NEWPORT cigarettes are the number one selling menthol cigarette in the United States.
2. Complainant owns numerous registrations for the NEWPORT mark with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 1,108,876 registered December 12, 1978).
3. Respondent’s <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names are confusingly similar to Complainant’s NEWPORT mark.
a. Respondent’s disputed domain names are a combination of Complainant’s NEWPORT mark with words describing products that Complainant sells, specifically the abbreviated “ecigs” from the term “electronic cigarette “.
b. Respondent’s <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names add the descriptive word “lights.”
c. Respondent’s <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names add a hyphen.
d. Respondent’s <newportecig.com>, <newportecigs.com>. <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com>disputed domain names feature the generic top-level domain (“gTLD”) “.com.”
e. Respondent’s <newportecigs.net> domain name features the gTLD “.net.”
4. Respondent has no rights or legitimate interests in the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names.
a. Respondent is in no way affiliated with Complainant. Respondent has not sought to obtain a license from Complainant or file a trademark application for the NEWPORT mark.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
i. Respondent uses the disputed domain names for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes and related products using Complainant’s NEWPORT mark.
ii. Respondent’s disputed domain names resolve to pages featuring hyperlinks to competing third-party websites.
5. Respondent registered and is using the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names in bad faith.
a. Respondent uses the disputed domain names to mislead and divert consumers away from Complainant’s legitimate business.
b. Respondent uses confusingly similar domain names to attract Internet users to pay-per-click websites thus profiting from Internet users’ confusion.
c. Respondent had notice of Complainant and its marks when it registered the disputed domain names.
i. Respondent registered the disputed domain names 57 years after Complainant began using its NEWPORT mark and 44 years after Complainant obtained its first registration for the NEWPORT mark with the USPTO.
6. In its Additional Submission, Complainant contends:
a. Complainant’s mark is famous;
b. The descriptive word “cigarettes” does not distinguish the disputed domain names; and
c. Respondent has no legitimate interest in the disputed domain names.
1. There are numerous websites using the NEWPORT mark for which Complainant has not filed a complaint.
a. <newport.com> is a website registered to a technology product company, unrelated to Complainant and unrelated to the sale of tobacco products.
b. <newport.org> is a directory providing links to webpages related to the sale of scientific, technology, mathematics, and literature.
c. <newport.net> appears to be an unoccupied domain name.
d. A “Google” search for the term “newport” does not product results related to Complainant or tobacco products on the first page of the search results.
2. Respondent’s domain names are not confusingly similar to Complainant’s marks.
a. Respondent’s disputed domain names add descriptive terms that are not similar to products sold by Complainant.
b. Respondent intends to use the disputed domain names to sell an electric device comprised of an atomizer and cartomizer which work to vaporize propylene and glycol.
3. Respondent has legitimate rights and interests in the disputed domain names.
a. Respondent plans on making a bona fide offering of goods in connection with the disputed domain names.
4. Respondent has not acted in bad faith.
1. Respondent’s <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com>> domain names are confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names.
3. Respondent registered or used the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.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.
Complainant argues that it uses the NEWPORT mark in connection with its famous cigarettes and related goods and services. Complainant claims that it began using the NEWPORT mark continuously since 1956. Complainant’s asserts that its NEWPORT cigarettes are the number one selling menthol cigarette in the United States. Complainant provides the Panel with evidence that it owns numerous registrations for the NEWPORT mark with the USPT (E.g., Reg. No. 1,108,876 registered December 12, 1978). Prior UDRP panels have concluded that providing evidence of a registration for a trademark with the USPTO is an effective method of showing rights in a given mark. 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). The Panel concludes that Complainant has rights in the NEWPORT mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant argues that Respondent’s disputed domain names are a combination of Complainant’s NEWPORT mark with words describing products that Complainant sells. For example, Complainant asserts that Respondent’s <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names add the descriptive word “lights.” Prior panels have found that adding descriptive words to a registered mark does not distinguish it sufficiently. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). The Panel takes note that Respondent admits to adding descriptive words to the disputed domain names. Complainant goes on to compare its mark to Respondent’s disputed domain names stating that Respondent’s <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names add a hyphen. Prior panels have also found that adding hyphens to domain names is not a sufficient variation to distinguish the disputed domain name from the registered mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Complainant points out that Respondent’s <newportecig.com>, <newportecigs.com>. <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> disputed domain names feature the generic top-level domain (“gTLD”) “.com.” Additionally, Complainant contends that Respondent’s <newportecigs.net> domain name features the gTLD “.net.” UDRP panels have frequently found that adding a gTLD does not distinguish a disputed domain name from a registered mark because domain names require a gTLD. 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); see also 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.”). Based on the above analysis, the Panel concludes that the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.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 that Respondent has no rights or legitimate interests in the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names. Complainant claims that Respondent is in no way affiliated with Complainant. Complainant also observes that Respondent has not sought to obtain a license from Complainant or file a trademark application for the NEWPORT mark. The Panel notes that the WHOIS information for the disputed domain names lists “Leonard Di Bari” as the registrant. Respondent further identifies as “Leonard Di Bari” and makes no allegations as to aliases or business names. The Panel sees that prior panels have often found that a respondent is not commonly known by a disputed domain name where there is no indication on the record to suggest such a claim. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) and thus has no rights or legitimate interests in the disputed domain names.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant argues that Respondent uses the disputed domain names for commercial gain and to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes and related products using Complainant’s NEWPORT mark. Complainant explains that Respondent’s disputed domain names resolve to pages featuring hyperlinks to competing third-party websites. See Annex 2. The Panel notes that all of the disputed domain names resolve to parked GoDaddy websites featuring third-party links, some of which including, “Quit w/ NicoDerm CQ,” “Tobacco Free California,” “$19 Car Insurance- Now,” “Esurance auto Insurance,” “Blown Glass Drip Tips,” “Premium Mods,” “Free Samples In Your Mail,” “Cheap Airline Tickets,” “E Coupons,” “China Wholesale Online,” and “Quit Smoking Today.” Prior panels have concluded that using a confusingly similar domain name to resolve to a website featuring competing third-party links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). The Panel thus concludes that Respondent has no rights or legitimate interests under Policy ¶ 4(c)(i) or ¶ 4(c)(iii) because Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names.
Complainant asserts that Respondent registered and is using the <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names in bad faith. Complainant contends that Respondent uses the disputed domain names to mislead and divert consumers away from Complainant’s legitimate business by providing competing links on the websites resolving from the disputed domain names. The Panel notes Annex 2 to reference the screenshots of the websites resolving from the disputed domain names. Previous panels have concluded that using a resolving website to provide hyperlinks that compete with a complainant indicates bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel therefore concludes that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant additionally contends that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses confusingly similar domain names to attract Internet users to pay-per-click websites thus profiting from Internet users’ confusion. The Panel again notes Annex 2 to view the resolving websites. Previous panels have often concluded that a respondent acts in bad faith under Policy ¶ 4(b)(iv) when it uses a confusingly similar domain name to attract internet users to its resolving website for commercial profit through pay-per-click links. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel therefore concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had notice of Complainant and its marks when it registered the disputed domain names. Complainant points out that Respondent registered the disputed domain names 57 years after Complainant began using its NEWPORT mark and 44 years after Complainant obtained its first registration for the NEWPORT mark with the USPTO. Complainant thus argues that Respondent has constructive knowledge of Complainant's rights in the mark. 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 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 <newportecig.com>, <newportecigs.com>, <newportecigs.net>, <newport-ecigs.com>, <newport-lights-ecigs.com>, and <newportlights-ecigs.com> domain names be TRANSFERRED from Respondent to Complainant..
John J. Upchurch, Panelist
Dated: January 2, 2014
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