Lorillard Licensing Company, LLC v. Privacy Locked / Privacy Locked LLC.
Claim Number: FA1305001500754
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Privacy Locked / Privacy Locked LLC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigaretts.com>, registered with Moniker Online Services, Inc.
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 May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 31, 2013, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <newportcigaretts.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. 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 June 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@newportcigaretts.com. Also on June 4, 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 27, 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. 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.
Complainant
a) Complainant contends that it has rights in the NEWPORT mark, used in connection with cigarettes. Complainant is the owner of registrations for the NEWPORT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Exhibit 5.
b) The disputed domain name is identical or confusingly similar to Complainant’s mark, as it uses Complainant’s mark in its entirety while adding the misspelled descriptive term “cigaretts.” The misspelling of the descriptive term in inconsequential. The disputed domain name also as the generic top-level domain (“gTLD”) “.com.”
c) Respondent has no rights or legitimate interests in the <newportcigaretts.com> domain name.
a. Respondent is not affiliated with Complainant in any way, and Complainant never gave Respondent license or other permission to use its mark.
b. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using the <newportcigaretts.com> domain name for commercial gain to mislead and divert consumers. The disputed domain name resolves to a website displaying links to competing third-party websites. See Complainant’s Exhibit 2.
d) Respondent registered and is currently using the <newportcigaretts.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by displaying competing third party links on the resolving website. See Complainant’s Exhibit 2.
b. Respondent is intentionally misleading and diverting customers away from Complainant. Further, even if no commercial gain is found, Respondent’s conduct creates initial interest confusion on the part of Internet users, thereby diverting customers searching for Complainant.
c. Respondent had actual or constructive knowledge because Respondent must have known of Complainant’s long-standing and famous mark, which has been in existence for nearly forty-nine years.
1. Respondent’s <newportcigaretts.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <newportcigaretts.com> domain name.
3. Respondent registered or used the <newportcigaretts.com> domain name 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.
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 contends that it has rights in the NEWPORT mark, used in connection with cigarettes. Complainant asserts it is the owner of registrations for the NEWPORT mark with the USPTO (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978). See Complainant’s Exhibit 5. As a result of Complaintn’s USPTO registrations, the Panel finds that Complainant has rights in the NEWPORT mark pursuant to Policy ¶ 4(a)(i). See Lorillard Licensing Co., LLC v. Haung, FA 1497789 (Nat. Arb. Forum June 20, 2013) (finding that “complainant has rights in the NEWPORT mark under Policy ¶ 4(a)(i)”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant next alleges that the disputed domain name is identical or confusingly similar to Complainant’s mark, as it uses Complainant’s mark in its entirety while adding the misspelled descriptive term “cigaretts.” Complainant urges that the misspelling of the descriptive term is inconsequential. Complainant states that the disputed domain name also as the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the deletion of the letter “e” from the descriptive term “cigarettes” does not differentiate the disputed domain name from Complainant’s mark. See Ashley Furniture Indus., Inc. v. Lasksh Internet Solutions Private Ltd., FA 1473309 (Nat. Arb. Forum Jan. 6, 2013) (finding that “adding the generic term ‘furnitur,’ which is a misspelled variant of the descriptive word ‘furniture,’ does not differentiate the domain name from Complainant’s mark for the purpose of Policy ¶4(a)(i)”). Next, the Panel finds that the addition of the gTLD “.com” is irrelevant for Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <newportcigaretts.com> domain name is confusingly similar to Complainant’s NEWPORT mark pursuant to 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 <newportcigaretts.com> domain name. Complainant asserts that Respondent is not affiliated with Complainant in any way, and Complainant never gave Respondent license or other permission to use its mark. The Panel notes that the Complainant does not specifically allege that Respondent is not commonly known by the disputed domain name. However, previous panels have found that a lack of permission or affiliation, as well as other evidence in the record, including the WHOIS information, may give an inference that a respondent is not commonly known by a disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel notes that the WHOIS information for the disputed domain name lists “Privacy Locked PrivateWhoisService@gmail.com” as the domain name registrant. Therefore, the Panel finds that, because Respondent lacked permission from Complainant and neither the WHOIS information nor any other evidence in the record indicates that Respondent was commonly known by the <newportcigaretts.com> domain name, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant makes the allegation that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and points out that Respondent uses the <newportcigaretts.com> domain name for commercial gain to mislead and divert consumers. The Panel notes that the disputed domain name resolves to a website displaying links to competing third-party websites. See Complainant’s Exhibit 2. Previous panels have found such a competing use to be a failure of a bona fide offering of goods or services or a legitimate noncommercial use. See Lorillard Licensing Co., LLC v. Fashion Group Geneve / Linda / Bjorvin, FA 1495821 (Nat. Arb. Forum June 6, 2013) (finding “Respondent’s use of the [<newporttobaccofans.com>] domain name to host a personal blog that features hyperlinks to Complainant’s competitors is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Therefore, the Panel finds that Respondent’s use of the <newportcigaretts.com> to display links to competing third party websites is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and is currently using the <newportcigaretts.com> domain name in bad faith. Complainant contends that Respondent is disrupting Complainant’s business by displaying competing third party links on the resolving website. See Complainant’s Exhibit 2. Such conduct has been found to constitute bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s use of the <newportcigaretts.com> domain name to display competing links constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant states that Respondent is intentionally misleading and diverting customers away from Complainant’s website. Further, Complainant urges that even if no commercial gain is found, Respondent’s conduct creates “initial interest confusion” on the part of Internet users, thereby diverting customers searching for Complainant. The Panel believes the Respondent is obtaining commercial gain by misleading and diverting customers, and finds that Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Ass’d Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant believes that Respondent had actual or constructive knowledge because Respondent must have known of Complainant’s long-standing and famous mark, which has been in existence for nearly forty-nine years. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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 <newportcigaretts.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 10, 2013
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