Lorillard Licensing Company, LLC v. lan xiao / xiao lan
Claim Number: FA1403001548642
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is lan xiao / xiao lan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newports-coupons.com>, registered with Bizcn.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2014; the National Arbitration Forum received payment on March 14, 2014. The Complaint was submitted in both Chinese and English.
On March 17, 2014, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <newports-coupons.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 March 24, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 14, 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@newports-coupons.com. Also on March 24, 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 April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant Lorillard Licensing Company, LLC (“Lorillard”) owns the trademark NEWPORT. Complainant owns both common law rights as well as several United States trademark registrations as set forth below (“Newport Marks”). Complainant also owns and operates a website at www.newport-pleasure.com which features additional information about its goods and services.
NEWPORT PLEASURE! 3,759,678 Cigarettes
NEWPORT 3,799,876 Cigarettes
NEWPORT MEDIUM MENTHOL BLUE 3,579,273 Cigarettes
NEWPORT MEDIUM MENTHOL BLUE 3,579,275 Cigarettes
NEWPORT MENTHOL BOX 3,579,270 Cigarettes
NEWPORT MENTHOL BOX 3,601,464 Cigarettes
NEWPORT LIGHTS MENTHOL GOLD 3,579,246 Cigarettes
NEWPORT LIGHTS MENTHOL GOLD 3,575,370 Cigarettes
NEWPORT PLEASURE DRAW 3,519,822 Customer loyalty services for commercial, promotional and/or advertising purposes, namely, sweepstakes for cigarettes.
NEWPORT PLEASURE PLAY 3,475,434 Entertainment services, namely, providing on-line computer games.
NEWPORT PLEASURE PLAY 3,475,429 Entertainment services, namely, providing on-line computer games.
M NEWPORT BLEND 3,603,072 Cigarettes
NEWPORT PLEASURE PAYDAY 3,392,908 Customer loyalty services for commercial, promotional and/or advertising purposes, namely customer loyalty services in the field of cigarettes.
NEWPORT PLEASURE ELITE 3,281,637 Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes, namely customer loyalty services in the field of cigarettes.
NEWPORT M BLEND 3,393,203 Cigarettes
NEWPORT PLEASURE REWARDS 3,164,986 Customer loyalty services for commercial, promotional, and/or advertising purposes, namely, customer loyalty promotional program for cigarettes.
THE WORLD OF NEWPORT PLEASURE 3,164,915 Cigarettes
NEWPORT'S PLEASURE ELITE CLUB 3,047,976 Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes, namely, customer loyalty promotional program for cigarettes.
NEWPORT'S PLEASURE ELITE CLUB 3,052,594 Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes, namely, customer loyalty promotional program for cigarettes.
NEWPORT PLEASURESTAKES 3,159,510 Customer loyalty services for commercial, promotional and/or advertising purposes, namely, customer loyalty promotional program for cigarettes.
NEWPORT PLEASURESTAKES 3,052,558 Customer loyalty services for commercial, promotional and/or advertising purposes, namely customer loyalty promotional program for cigarettes.
NEWPORT PLEASURE 2,711,321 Cigarettes
NEWPORT MEDIUM 2,597,763 Cigarettes
NEWPORT 2,600,870 Cigarettes
NEWPORT PLEASURE GOODS 2,500,002 Merchandise catalog services featuring gift premiums, namely, camping gear, bicycles, sportswear, sporting goods, sunglasses, audio electronics.
NEWPORT 1,108,876 Cigarettes
NEWPORT 1,191,816 Cigarettes
NEWPORT MENTHOL GOLD CIGARETTES 4,048,144 Cigarettes
NEWPORT NON-MENTHOL 4,077,768 Cigarettes
NEWPORT NON-MENTHOL CIGARETTES 4,058,881 Cigarettes
NEWPORT NON-MENTHOL CIGARETTES 4,055,274 Cigarettes
NEWPORT NON-MENTHOL CIGARETTES 4,048,146 Cigarettes
NEWPORT CIGARETTES 4,048,145 Cigarettes
NEWPORT NON-MENTHOL 4,048,143 Cigarettes
NEWPORT NON-MENTHOL 4,048,141 Cigarettes
NEWPORT MENTHOL BLUE CIGARETTES 4,048,140 Cigarettes
FACTUAL AND LEGAL GROUNDS
[a.] Complainant Lorillard is the Owner of the Newport Marks.
This dispute arises out of Respondent’s unauthorized registration and use of the Disputed Domain Name NEWPORTS-COUPONS.COM. Such registration and use constitutes a clear infringement of Lorillard’s intellectual property rights in the registered Newport Marks.
Lorillard uses its Newport Marks in connection with its famous cigarettes and related goods and services. In 1956, Lorillard first began using the Newport Marks, and predecessor Newport trademarks, in connection with cigarettes and related goods and services and has since that time continually used the Newport Marks. Lorillard is the third largest tobacco company in the United States. NEWPORT cigarettes are the number one selling menthol cigarette in the United States.
Lorillard continuously and actively promotes NEWPORT cigarettes. The Newport Marks are used in domain names and on websites in connection with Lorillard’s online presence.
In addition, Lorillard owns numerous United States registrations for the trademark NEWPORT and the Newport Marks. In light of this extensive use and its numerous registrations, Lorillard is the undisputable owner of the NEWPORT mark as well as the Newport Marks for use in connection with cigarettes and related goods and services. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶4(a)(i)”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar foreign trademark offices).
[b.] The Disputed Domain Name is identical to the Complainant’s Newport
Marks, as it reproduces the NEWPORT mark in its entirety.
NEWPORTS-COUPONS.COM is identical or confusingly similar to Complainant’s Newport Marks, as it reproduces the NEWPORT mark in its entirety and is used in connection with the promotion of the sale of identical goods. As described above, Lorillard owns statutory and common law rights in the Newport Marks by virtue of its extensive use of these marks in interstate commerce and by virtue of its registrations and applications for additional registrations for these marks in the United States. The Disputed Domain Name is simply a combination of Lorillard’s NEWPORT mark, the letter “S,” a hyphen, and the descriptive word “COUPONS.”
First, the addition of the letter “S” to the NEWPORT mark does not sufficiently distinguish the Disputed Domain Name from the mark especially when the mark is combined with the product Lorillard typically sells using the NEWPORT mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Second, the addition of the non-distinct term “COUPONS” does nothing to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Enterprise Holdings, Inc. v. Dzone Inc., FA1212001478171 (Nat Arb. Forum Jan. 30, 2013) (finding the addition of the word “coupons” suggestive of Complainant’s business). In fact, the word “COUPONS” arguably draws customers who are looking to purchase Lorillard’s products to the Disputed Domain Name because discount coupons are often sought by parties seeking to purchase Complainant’s product online. Finally, the addition of a hyphen and the generic top-level domain .COM is irrelevant to a Policy ¶4(a)(i) determination. Margaritaville Enters., LLC v. Delcom Commc’ns, FA 0802001143729 (Nat. Arb. Forum Mar. 24, 2008). Clearly, then, there is a likelihood of confusion and infringement caused by Respondent’s registration and use of the Disputed Domain Name.
[c.] The Respondent has no rights or legitimate interests in the Disputed Domain Name as the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use the Complainant’s Newport Marks, or to register a domain name incorporating the Complainant’s Newport Marks.
The Respondent has no rights or legitimate interests in the term NEWPORT or NEWPORTS-COUPONS.COM because Respondent is in no way affiliated with Complainant. Complainant is the rightful owner of the NEWPORT trademark and all of the Newport Marks. Respondent is simply trading off of the goodwill created by Lorillard in its NEWPORT trademark and other Newport Marks.
At no time did Respondent ever seek or obtain a license from Lorillard to use the Newport Marks or to post content on the Disputed Domain Name website referring to Lorillard’s goods or services. Nor has Respondent attempted to file any trademark applications for the mark NEWPORT in connection with any goods or services, as a legitimate trademark owner would do. Of course, if Respondent had done so, such applications would clearly be objectionable since Lorillard is the owner of the Newport Marks. Respondent’s complete lack of any registration and lack of even an attempt to register rights in NEWPORT demonstrate that Respondent in fact has no legitimate rights in the NEWPORT mark and the Disputed Domain Name. See, e.g., Ronson Plc v. Unimetal Sanayi, D2000-0011 (WIPO Mar. 11, 2000) (confirming no legitimate interest or use in the mark due to lack of registration); see also Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1052 (9th Cir. 1999) (showing the mere registration of a domain name does not confer any trademark rights on the registrant).
Moreover, there is no demonstrable use by Respondent of the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent registered the Disputed Domain Name on December 2, 2013, fifty-seven years after Lorillard first began using NEWPORT and related marks in connection with its famous cigarettes, and forty-four years after Lorillard registered its first Newport Mark.[1] Respondent has apparently used this Disputed Domain Name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s Newport Marks. Currently NEWPORTS-COUPONS.COM resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to the products Complainant offers. Using a disputed domain name to sell products identical to Complainant’s products does not give the respondent rights or legitimate interests. Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003). Respondent’s use of the Disputed 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.
In short, Respondent has absolutely no legitimate right or interest in the Disputed Domain Name NEWPORTS-COUPONS.COM.
[d.] The Respondent registered and is currently using the Disputed Domain Name in bad faith to conduct unauthorized sales of cigarettes.
The Policy sets forth four non-exclusive and non-exhaustive factors that the Panel may examine to determine the Respondent has registered or used a domain name in bad faith. These are whether:
(i) the domain was
registered primarily for the purpose of selling it to the complainant or a
competitor for more than the documented out-of-pocket expenses related to the
name; or
(ii) the domain was
registered in order to prevent the mark owner from using it, provided that the
registrant has engaged in a pattern of such registration; or
(iii) the domain was
registered primarily to disrupt the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. Policy ¶4(b).
A complainant need not show bad faith under all four of these factors, but need only show bad faith as to one. In particular, Respondent’s bad faith is established under the third and fourth factors. Respondent’s intentional use of Complainant’s Mark to mislead and divert customers away from Complainant’s legitimate business to NEWPORTS-COUPONS.COM to conduct unauthorized sales of NEWPORT cigarettes amounts to use of the Disputed Domain Names in bad faith. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and misled Internet users by implying that the respondent was affiliated with the complainant).
Furthermore, courts have recognized that using another’s trademark in order to confuse customers into visiting a website that is unaffiliated with the trademark owner also constitutes infringement, even if the customer ultimately realizes that there is no connection with the trademark owner. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d at 1062 (“Although there is no source confusion in the sense that consumers know they are patronizing [the junior user] rather than [the senior user], there is nevertheless initial interest confusion in the sense that, by using [the senior user’s mark] to divert people looking for [the senior user’s goods] to its web site, [the junior user] improperly benefits from the goodwill that [the senior user] developed in its mark.”); Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1025 (9th Cir. 2004) (declaring initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and constitutes actionable trademark infringement). Here, Respondent registered the Disputed Domain Name in a manner calculated to improperly trade off of the goodwill of the Newport Marks. Such use of the Newport Marks constitutes trademark infringement in bad faith.
Clearly, the only reason Respondent registered NEWPORTS-COUPONS.COM was because the name contained Complainant’s famous NEWPORT trademark. Respondent registered the Disputed Domain Name fifty-seven years after Lorillard began using its NEWPORT mark, and forty-four years after Lorillard obtained its first registration of NEWPORT and Design (Reg. No. 871,160) trademark with the United States Patent & Trademark Office. Under these circumstances, it is evident that the Respondent must have had actual or constructive knowledge of Lorillard’s rights in its Newport Marks when Respondent registered the Disputed Domain Name in 2013. See Jupiters Ltd. v. Hall, D2000-0574) (WIPO Aug. 3, 2000) (noting “the fact that Complaint’s name and trade mark is so well and widely known… makes it inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests"). Respondent's registration of the Disputed Domain Name with such actual or constructive knowledge of Lorillard’s marks is alone sufficient to find bad faith under the Policy. See The Pillsbury Co. v. Keyword Mktg., Inc., FA 780315 (Nat. Arb. Forum Oct. 3, 2006) (ordering Respondent to transfer domain name PILLSBURYSTORE.COM to The Pillsbury Company because "[r]egistration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy”). In short, Respondent's activities constitute bad faith under the Policy and the Disputed Domain Name should be transferred to Lorillard.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Pursuant to Rule 11(a), the Panel determines 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.
Complainant uses its NEWPORT marks in connection with its cigarettes and related goods and services. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 871,160, registered June 17, 1969). Complainant does not need to provide evidence of a trademark in China; Complainant need only prove it has trademark rights SOMEWHERE. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Thus, the Panel concludes Complainant’s registration of the NEWPORT mark with the USPTO sufficiently provides evidence of rights in the mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <newports-coupons.com> domain name is confusingly similar to Complainant’s NEWPORT mark. Respondent adds the letter “s” to Complainant’s NEWPORT mark. Respondent’s addition of a single letter does not adequately distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶4(a)(i)). Respondent adds the term “coupons” to Complainant’s mark in the disputed domain name. Respondent’s addition of a generic descriptive term fails to adequately differentiate the domain name from Complainant’s mark under Policy ¶4(a)(i). 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)). Finally, Respondent adds a hyphen and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Respondent’s addition of a hyphen and a gTLD is disregarded in determining confusing similarity in a Policy ¶4(a)(i) determination because these elements are required by domain name syntax. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Respondent’s <newports-coupons.com> domain name is confusingly similar to Complainant’s NEWPORT mark according to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <newports-coupons.com> domain name. Respondent is not affiliated with Complainant. Respondent never sought or obtained a license from Complainant to use the NEWPORT mark. “lan xiao / xiao lan” is listed as the registrant of the disputed domain name in the WHOIS record, which seems to bear no relationship to the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. This Panel concludes Respondent is not commonly known by the <newports-coupons.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <newports-coupons.com> domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s NEWPORT mark. Respondent’s domain name resolves to a website where Respondent operates an online store for Internet users to purchase products identical to the products Complainant offers (and apparently includes Complainant’s products). Since Respondent is using the <newports-coupons.com> domain name to provide Internet users with goods that directly compete with Complainant, Respondent is not using the disputed domain name in connection with a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The Panel’s conclusion might well be different if Respondent was selling only Complainant’s authentic products.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <newports-coupons.com> domain name for the “unauthorized sale of cigarettes” using Complainant’s NEWPORT mark, inter alia. Respondent’s disputed domain name leads to a page purporting to sell Complainant’s products and products directly competing with Complainant’s business. Respondent’s use of the <newports-coupons.com> domain name disrupts Complainant’s business by selling competitors’ products, which demonstrates bad faith registration and use under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent uses the <newports-coupons.com> domain name for commercial gain to mislead and divert consumers in the promotion of the unauthorized sale of cigarettes using Complainant’s NEWPORT mark. This Panel is not certain what constitutes an “unauthorized sale”. Anyone who owns an authentic package or carton of Complainant’s cigarettes may resell them without Complainant’s permission…at a profit or a loss. Complainant has not claimed the cigarettes are counterfeit. Complainant has no right to prevent the resale of products that properly contain its mark.
Complainant claims Respondent must have had actual knowledge of Complainant’s rights in its NEWPORT mark when Respondent registered the <newports-coupons.com> domain name in 2013. Respondent registered the disputed domain name 57 years after Complainant began using the NEWPORT mark and 44 years after Complainant obtained its first registration of the NEWPORT mark with the USPTO. This Panel would agree, especially since Respondent claims to be selling Complainant’s products, inter alia. It appears Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii) because Respondent also sells competitors’ products. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <newports-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 5, 2014
[1] Lorillard’s United States registration for NEWPORT and Design (Reg. No. 871,160) was issued by the USPTO on June 17, 1969. Lorillard’s first use of the NEWPORT trademark was in 1956. See Annex 6. The Domain Name was registered by Respondent on December 2, 2013.
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