Lorillard Licensing Company, LLC v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1210001467920
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettes-us.org>, registered with Internet.bs Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2012; the National Arbitration Forum received payment on October 18, 2012.
On October 21, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettes-us.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 October 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@newportcigarettes-us.org. Also on October 30, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < newportcigarettes-us.org > domain name, the domain name at issue, is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lorillard Licensing Company, LLC, is the third largest tobacco company in the United States and owns the NEWPORT trademark. NEWPORT cigarettes are the number one selling menthol cigarette in the United States. Complainant also operates a website at <www.newport-pleasure.com> which features additional information about its goods and services. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT marks (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978) as well as registrations with the Austrian Patent Office (“APO”) (Reg. No. 39,244 registered July 9, 1958) and the Norwegian Industrial Property Office (“NIPO”) (Reg. No. 66,025 registered January 22, 1959). Respondent’s <newportcigarettes-us.org> domain name is confusingly similar to Complainant’s NEWPORT mark, as merely adding the descriptive term “cigarettes”, a hyphen, and the geographic term “us” for “United States” does not distinguish Respondent’s domain name from Complainant’s mark. Further, the addition of the generic top-level domain (“gTLD”) “.org” is irrelevant to a Policy ¶ 4(a)(i) analysis. Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “Domain Administrator / Fundacion Private Whois” as the registrant. Respondent is not affiliated with Complainant, nor did Respondent receive permission to use the NEWPORT mark. Respondent is using the disputed domain name for commercial gain to mislead and divert customers using Complainant’s mark, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), because it uses the disputed domain name to operate an unauthorized online store selling products identical to those Complainant offers. Further, Respondent is attempting to use the disputed domain name to divert customers away from Complainant’s legitimate business. Respondent’s disputed domain name was registered with the intention of diverting customers away from Complainant’s website to Respondent’s resolving website that sells competing products for Respondent’s own commercial gain. Respondent had actual or constructive knowledge of Complainant’s rights in the NEWPORT trademarks. Respondent registered <newportcigarettes-us.org> on April 16, 2012.
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, Lorillard Licensing Company, LLC, is the third largest tobacco company in the United States and owns the NEWPORT trademark. Complainant also operates a website at <www.newport-pleasure.com> which features additional information about its goods and services. Complainant owns several trademark registrations with the USPTO for the NEWPORT marks (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978) as well as with APO (Reg. No. 39,244 registered July 9, 1958) and NIPO (Reg. No. 66,025 registered January 22, 1959). Although Respondent appears to reside in Panama, Policy ¶ 4(a)(i) only requires that Complainant establish rights in the NEWPORT mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, Complainant’s trademark registrations with the USPTO, NIPO, and APO are sufficient to establish rights in the NEWPORT mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’).”).
Respondent’s <newportcigarettes-us.org> domain name is confusingly similar to Complainant’s NEWPORT mark as merely adding the descriptive term “cigarettes” does not adequately distinguish Respondent’s domain name from Complainant’s mark. The addition of a descriptive term does not differentiate Respondent’s domain name from Complainant’s mark as the added term directly relates to Complainant’s business. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Respondent’s attachment of the geographic term for the United States, “us”, does not differentiate the disputed domain name from the mark. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Moreover, the addition of a hyphen between “newportcigarettes” and “us” and the gTLD “.org” does not remove the disputed domain name from the realm of confusing similarity. Respondent’s use of a hyphen and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, Respondent’s <newportcigarettes-us.org> disputed domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name since the WHOIS information identifies “Domain Administrator / Fundacion Private Whois” as the registrant. Respondent is not affiliated with Complainant, nor did Respondent receive permission to use the NEWPORT mark. Respondent is not commonly known by the disputed 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).
Respondent is using the disputed domain name for commercial gain to mislead and divert customers using Complainant’s marks. Respondent’s <newportcigarettes-us.org> resolves to a website where Respondent operates an unauthorized online store for Internet users to purchase products identical to Complainant’s products. Respondent’s use of the disputed domain name to sell Complainant’s goods is not 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). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is attempting to use the disputed domain name to divert customers away from Complainant’s legitimate business. Respondent is using the disputed domain name to conduct an unauthorized sale of Complainant’s NEWPORT products under the disputed domain name, and Respondent’s use of the disputed domain name to sell Complainant’s products constitutes competition and disrupts Complainant’s business, which is evidence of 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).”)
Respondent’s disputed domain name was registered with the intention of misleading and diverting customers away from Complainant’s website for Respondent’s own commercial gain. This is evidenced by Respondent’s use of the NEWPORT trademark and the sale of NEWPORT products on Respondent’s website. Respondent is attempting to divert Internet users away from Complainant’s website and onto Respondent’s website by creating confusion as to an affiliation between Complainant and Respondent for Respondent’s own commercial gain, which reveals bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Lastly, Respondent had actual or constructive knowledge of Complainant’s rights in the NEWPORT trademarks. Respondent had constructive notice based on Complainant’s registration of the NEWPORT mark nearly fifty-six years before Respondent’s registration of the disputed domain name. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark and Respondent’s sale of Complainant’s products at the resolving website, it is clear that Respondent had actual knowledge of the mark and Complainant's rights. Thus, 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)." Therefore, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigarettes-us.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 13, 2012
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