Lorillard Licensing Company, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1305001499683
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buykentcigarettes.com>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2013; the National Arbitration Forum received payment on May 14, 2013.
On May 14, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <buykentcigarettes.com> 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 May 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@buykentcigarettes.com. Also on May 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Name
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims that it owns marks such as KENT and KENT CIGARETTES, which it uses in connection with the sale of cigarettes and tobacco products. Complainant claims that it began using the KENT mark in its sale of cigarettes in 1952, and has since grown to be the third largest tobacco company in the United States. Complainant has accordingly registered its marks with the USPTO for the KENT CIGARETTES mark (Reg. No. 4,018,812 filed Jan. 19, 2011, registered Aug. 20, 2011) and the KENT mark
(Reg. No. 1,108,879 registered on Dec. 12, 1978). The Panel agrees that even though Respondent lists its location as Panama, Complainant’s USPTO registration is a satisfactory showing of Policy ¶ 4(a)(i) rights. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <buykentcigarettes.com> domain name is confusingly similar to Complainant’s mark. Complainant notes that Respondent merely takes the KENT mark and inserts the term “cigarettes”—descriptive of Complainant’s products—and the generic term “buy” meaning to purchase. Complainant contends that adding the gTLD “.com” is irrelevant. The Panel agrees that the addition of a gTLD is not considered under the Policy. 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). The Panel also agrees that neither the terms “cigarettes” nor “buy” add anything distinctive to the mark. 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); Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Thus the Panel concludes that the buykentcigarettes.com> domain name is confusingly similar to the KENT and KENT CIGARETTES marks under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that Respondent is not commonly known by the disputed domain name. Complainant contends that it has not affiliated itself with Respondent. Complainant notes that Respondent has never obtained a license to use the KENT mark in domain names. The Panel notes that Respondent has decided to use the “Fundacion Private Whois / Domain Administrator” privacy service as its registrant name in the WHOIS information. The Panel concludes that because Respondent has no license to use the KENT mark, there is no reason to find that Respondent is commonly known by the <buykentcigarettes.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is using the <buykentcigarettes.com> domain name to operate an unauthorized store wherein Respondent acts as vendor of counterfeit goods, or at the very least of Complainant’s own goods. Complainant argues that there is nothing bona fide about Respondent’s unauthorized commercial operation. The Panel notes that the <buykentcigarettes.com> domain name resolves to a website that states “GET Cheap Kent Cigarettes HERE FOR CHEAP!” along with a roughly translated, cryptic, and enigmatic essay that appears to have the phrase “Cheap Kent Cigarettes” randomly pasted in throughout the prose. The Panel agrees that Respondent has used the domain name primarily to promote “cheap” prices for Complainant’s products, which in no way serves as a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume. . . is not bona fide use).
Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith through a commercial disruption of Complainant’s business. The Panel again notes that the disputed domain name includes references to a purported offer of “CHEAP” cigarettes sold under the KENT mark. The Panel agrees that soliciting Complainant’s own goods in competition with Complainant is evidence of a Policy ¶ 4(b)(iii) bad faith use and registration for commercial disruption. See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Complainant argues that Respondent has engaged in bad faith by confusing Internet users into a likelihood of belief that Complainant was a sponsor or affiliate of the content on the <buykentcigarettes.com> domain name. Complainant argues that it is not dispositive that the domain name is blatantly selling counterfeit or unauthorized goods. Complainant contends that confusion still exists in which Internet users will initially enter the domain name believing they are perusing bona fide products. The Panel notes that the domain name’s resolving website sporadically solicits Internet users to buy cheap KENT brand cigarettes through the website. The Panel concludes that the use of the KENT mark within the domain name itself, as well as in conjunction with the unauthorized solicitation to buy KENT brand cigarettes, illustrates Respondent’s Policy ¶ 4(b)(iv) bad faith in registering and using a domain name to capitalize on the likelihood that Internet users arrive at the domain name in the belief they are doing business with Respondent. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name creates the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Complainant finally argues that Respondent registered this <buykentcigarettes.com> domain name because of the value of KENT mark. Complainant believes that Respondent had to have had actual knowledge of Complainant’s rights in the mark given the fact the domain name is being used to sell cigarettes that are sold under the KENT mark. Complainant thus argues that Respondent’s bad faith is predicated on either its actual or constructive knowledge. 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 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <buykentcigarettes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 25, 2013
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