Lorillard Licensing Company, LLC v. domain admin
Claim Number: FA1305001500465
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is domain admin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigaretteswebsite.net>, registered with Moniker Online Services, Inc.
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.
The Honourable Neil Anthony Brown as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2013; the National Arbitration Forum received payment on May 17, 2013.
On May 22, 2013, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <newportcigaretteswebsite.net> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 May 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@newportcigaretteswebsite.net. Also on May 22, 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 The Honourable Neil Anthony Brown 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
i. At no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain name website referring to Complainant’s goods or services.
ii. Respondent’s <newportcigaretteswebsite.net> resolves to a website which displays hyperlinks to competing third-party websites.
i. Respondent’s intentional use of Complainant’s mark to mislead and divert customers away from Complainant’s legitimate business to <newportcigaretteswebsite.net> to conduct an unauthorized sale of NEWPORT cigarettes, other brands of cigarettes and unrelated goods and services amounts to registration and use of the disputed domain name in bad faith.
ii. Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the third largest tobacco company in the United States and it uses its NEWPORT marks in commerce to designate its cigarette products.
2. Complainant owns numerous United States registrations for the trademark NEWPORT. It is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 871,160, registered June 17, 1969).
3. Respondent registered the disputed domain name on March 17, 2012.The domain name resolves to a website which displays hyperlinks to third-party websites which purport to compete with Complainant, websites that purport to offer Complainant’s brand of cigarettes for sale and other websites that offer goods and services unrelated to those of Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it uses its NEWPORT marks in connection with its famous cigarettes and related goods and services and that it owns numerous United States registrations for the trademark NEWPORT including trademark registrations with the USPTO (e.g., Reg. No. 871,160, registered June 17, 1969). The Panel notes that Respondent appears to reside in Hong Kong. However, the Panel finds that Policy ¶ 4(a)(i) only requires Complainant to register its mark in some jurisdiction and not in the country in which Respondent resides and operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel finds that Complainant’s registration of the NEWPORT mark with the USPTO is adequate to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NEWPORT mark. Complainant alleges that the disputed domain name is simply a combination of Complainant’s NEWPORT mark, the descriptive term “cigarettes,” which describes the product that Complainant sells using the NEWPORT marks, and the term “website.” The Panel notes that the word “website” is generic in nature. The Panel finds that Respondent’s use of the descriptive term “cigarettes” and the generic term “website” does not sufficiently differentiate the domain names from the mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Finally, Complainant contends that the gTLD “.net” is irrelevant to a Policy ¶ 4(a)(i) determination. In Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005), the panel held that the addition of the gTLD “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark. Thus, the Panel concludes that Respondent’s <newportcigaretteswebsite.net> domain name is confusingly similar to Complainant’s NEWPORT mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s NEWPORT trademark and to
use it in its domain name, adding only the words “cigarettes” and “website” which
suggests that the domain name relates to the product sold by Complainant,
namely cigarettes and that the domain name will lead to a website dealing with
Complainant’s cigarettes;
(b) Respondent has then used the disputed domain name to resolve to a website which displays hyperlinks to third-party websites which purport to compete with Complainant, websites that purport to offer Complainant’s brand of cigarettes and competing brands for sale and other websites that offer goods and services unrelated to those of Complainant;
(c)Respondent has engaged in these activities without the consent or approval
of Complainant;
(d)Complainant argues that at no time did Respondent ever seek or obtain a license from Complainant to use the NEWPORT marks or to post content on the disputed domain name website referring to Complainant’s goods or services. Complainant also asserts that Respondent has not attempted to file any trademark applications for the NEWPORT mark in connection with any goods or services, as a legitimate trademark owner would do. The Panel notes that the WHOIS records lists “domain admin” as the registrant of the <newportcigaretteswebsite.net> domain name. See Annex 1. Prior panels have found that Respondent is not commonly known by a disputed domain name where no evidence in the record indicates that it is known by the domain name and Complainant has not authorized Respondent to use the mark in a domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(i).
(d)Complainant claims that Respondent’s <newportcigaretteswebsite.net> resolves to a website which displays hyperlinks to competing third-party websites. The Panel notes that Respondent’s domain name resolves to a web page displaying competing hyperlinks titled “Visit TobaccoFreeCA.com,” “Learn to Quit Smoking,” and others. See Annex 2. The Panel also notes that Respondent has used the disputed domain name to resolve to a website which displays hyperlinks to third-party websites which purport to compete with Complainant, websites that purport to offer Complainant’s brand of cigarettes and competing brands for sale and other websites that offer goods and services unrelated to those of Complainant such as “$0.99 Domain at Go Daddy,” “Upgrade to Windows 8,” and “HIPAA Compliant Hosting.” Id. Complainant argues that Respondent has thus used the 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 and the other goods and services referred to above. As the Panel concludes that Respondent is using the disputed domain name to provide competing and unrelated hyperlinks, the Panel finds that Respondent is not using the <newportcigaretteswebsite.net> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name
was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is intentionally trying to divert consumers away from Complainant’s legitimate business to Respondent’s own website. The Panel notes that Respondent’s disputed domain name resolves to a website featuring competing links titled “Visit TobaccoFreeCA.com” and “Learn to Quit Smoking.” See Annex 2. As the Panel finds that Respondent’s use of the <newportcigaretteswebsite.net> domain name disrupts Complainant’s legitimate business, the Panel holds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant alleges that Respondent has apparently used the disputed domain name for commercial gain to mislead and divert customers in the promotion of the unauthorized sale of cigarettes using the NEWPORT mark. The Panel agrees that on the evidence Respondent has been engaged in that activity and that it amounts to use of the <newportcigaretteswebsite.net> domain name in bad faith. The Panel notes that Respondent’s domain name resolves to a web page displaying competing hyperlinks titled “Visit TobaccoFreeCA.com,” “Learn to Quit Smoking,” and others. See Annex 2. The Panel also notes that Respondent has used the disputed domain name to resolve to a website which displays hyperlinks to third-party websites which purport to compete with Complainant, websites that purport to offer Complainant’s brand of cigarettes and competing brands for sale and other websites that offer goods and services unrelated to those of Complainant such as “$0.99 Domain at Go Daddy,” “Upgrade to Windows 8,” and “HIPAA Compliant Hosting.” Id. Complainant argues that Respondent has thus used the 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 and the other goods and services referred to above. See Annex 2.The Panel agrees with that submission. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Accordingly, the Panel finds that Respondent is using the disputed domain name to attract consumers to its own website for commercial gain, which demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent must have had actual or constructive knowledge of Complainant’s rights in its NEWPORT marks when Respondent registered the disputed domain name in 2012. Complainant claims that Respondent registered the <newportcigaretteswebsite.net> domain name nearly fifty-six years after Complainant began using its NEWPORT mark, and forty-three years after Complainant obtained its first registration of the NEWPORT and Design trademark 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 Respondent’s use of the domain name to provide competing links, 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name
using the NEWPORT mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used the
disputed domain name in bad faith within the generally accepted meaning of that
expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigaretteswebsite.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown, QC Panelist
Dated: June 15, 2013
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