Lorillard Technologies, Inc. v. John Crenshaw
Claim Number: FA1306001504085
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is John Crenshaw (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blucigsreview.net>, registered with 1 & 1 INTERNET AG.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.
On June 12, 2013, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <blucigsreview.net> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@blucigsreview.net. Also on June 14, 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.
A timely Response was received and determined to be complete on July 5, 2013.
Additional Submissions were received from the Complainant on July 11, 2013, and from the Respondent on July 11, 2013. Both complied with Supplemental Rule 7 and have been considered by the Panel.
On July 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is Lorillard Technologies, Inc., a tobacco company that uses the BLU CIGS mark to market and sell electronic cigarettes. Complainant contends that its predecessor was Blec, LLC, and that it acquired Blec and all of its intellectual property rights. Complainant has evidence that Blec held trademark rights in a BLUE ECIGS mark. See United States Patent & Trademark Office (“USPTO”) Reg. No. 3,846,035 registered on Sept. 7, 2010 (filed March 17, 2009).
Complainant’s predecessor, Blec, began using the BLU CIGS mark in 2009. Complainant has since registered many marks in the BLU CIGS family of marks, and has actively promoted the BLU CIGS mark in the marketplace. See Complainant’s Ex. 4. Complainant contends that it holds common law rights in the mark from some unspecified period beginning in 2009.
Respondent has registered the <blucigsreview.net> domain name, which incorporates the entire BLU CIGS mark and adds the generic term “review.” The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant. Under Policy ¶ 4(a)(i), Complainant asserts that the domain name and the mark are either identical or confusingly similar.
As to Policy ¶ 4(a)(ii), Complainant asserts that Respondent lacks rights in and has no legitimate interest in the name.
Respondent is not an affiliate of Complainant. Respondent is not licensed to make use of the BLU CIGS marks in domain names.
Respondent uses the <blucigsreview.net> domain name to host a website that promotes competing hyperlinks. Respondent sees financial profits when visitors click on these hyperlinks.
Complainant asserts that Respondent’s actions constitute bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent is using this domain name to disrupt Complainant’s business. It asserts that Respondent clearly intends for Internet users to become confused as to the source of the website’s hyperlinks—these users will believe the competing hyperlinks are endorsed by Complainant when the links are to competitors or others unaffiliated with Complainant.
Respondent has constructive, if not actual knowledge, of Complainant’s marks based upon Complainant’s many registrations of the BLU CIGS mark.
B. Respondent
Neither party expressly noted that the Domain Name was registered on October 1, 2009, prior to the issuance of the mark to Complainant; this information is found at Annex A to the Complaint.
Respondent does not address the issue of “identical or confusingly similar” under Policy ¶ 4(a)(i).
Respondent does respond to the allegations concerning rights in the name and bad faith under Policy ¶ 4(a)(ii) and (iii).
Respondent notes that it is in good standing as a “BluCigs affiliate.” Respondent claims he has been a member of the affiliate program, run by PepperJam, for over two years. This demonstrates rights in the name.
In his Response, Respondent provides copies of an older website hosted on the disputed domain name that discusses the benefits of BLU CIGS products.
Respondent states that the website only has hyperlinks to alleged competitors because the website is being redone and then Respondent will launch an upgraded website.
Respondent states that he had no idea that parking the website during the web design process would lead to the hosting of competing hyperlinks. Respondent merely parked the website, and did not intend or expect such content to appear without his explicit consent. Respondent asserts that he is willing to place up a placeholder website until the new website is finished, thus negating the potential for competing hyperlinks.
C. Additional Submissions
1. Complainant’s Additional Submission.
Complainant asserts first that Respondent is not in compliance with the Affiliate Agreement, which apparently prohibits the use of the use of “Blu” in his URL. Complainant also denies that the evidence is sufficient.
Complainant goes on to complain that the hyperlinks under the parked web-site are clear evidence of “bad faith.”
2. Respondent’s Additional Submission
In the additional submission, Respondent asserts that the addition of the word “review” means that the domain name is not confusingly similar or identical.
Respondent goes on to assert that he may have misunderstood the affiliate policy but that he had no intent to act in any manner that might be described as “bad faith.” He restates his willingness to correct the “parked” page so that there are no hyperlinks to competitors.
Factually, Complainant has some problems. First, the domain name predates the trade mark. The scantly allegations do not show any evidence to support the claim of a common law mark.
The name does contain the word review, which certainly calls into question the issue of “identical or confusingly similar.”
As to rights in the name, Respondent has shown clear evidence of an affiliation and has shown that the Complainant, or someone acting on behalf of the Complainant, paid Respondent under the terms of the agreement, all of which demonstrate that Respondent has some “rights in the name,” or at least thought he did.
Finally, Respondent has offered facts attempting to rebut the claim of “bad faith” including his offer to correct the allegations concerning competing product hyperlinks.
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.
Respondent raised the issues under Policy ¶ 4(a)(i) in his Additional Submission. This limited attempt to rebut the prima facie case established by the Complainant is certainly not sufficient to constitute enough of a rebuttal to allow the panel to avoid considerations of the other issues under Policy ¶ 4(a).
However, the Panel would note, the prima facie case made by Complainant was less than candid. Although Complainant clearly knew that the domain name registration predated its own trade mark registration, it did not bother to note that issue. Further, it has offered neither evidence of a common law mark nor evidence of an assignment of rights by its predecessor in interest.
Therefore, the Panel feels compelled to find that the issue of identical/confusingly similar has not been rebutted. 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.”).
However, Respondent has clearly shown rights in the name, by and through the
Affiliate Agreement. Had Complainant wished to enforce the prohibition against use of the word “Blu” by Respondent, it certainly had an opportunity to do so. Therefore, the Panel finds that Respondent has rights in the name, for he was using the website to promote the Complainant’s products and receive income, if only a little, from Complainant or its agents. Therefore, there is no evidence of the violation of Policy ¶ 4(a)(ii). In Educ. Directories Unlimited v. Reflex Publ’g, Inc., FA 142378 (Nat. Arb. Forum Mar. 26, 2003), the panel held that the respondent had shown a bona fide offering under Policy ¶ 4(c)(i) by illustrating that the complainant and the respondent were in a business relationship in which both parties sought to exploit the domain name for a respective gain.
There is also no evidence of registration or use in bad faith as required by Policy ¶ 4(a)(iii). Respondent has explained the alleged hyperlinks and has offered to remove the offending “place keeper” web page. Admittedly, such hyperlinks have been held to be in bad faith. The panel in Royal Bank of Scotland Grp plc et al. v. Demand Domains, held that there is neither a Policy ¶ 4(c)(i) bona fide offering, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in the registration and use of a domain name to host web directories that contain related, competing, or even unrelated hyperlinks. See FA 714952 (Nat. Arb. Forum Aug. 2, 2006).
Respondent claims that he had no idea that parking the website during the web design process would lead to the hosting of competing hyperlinks. Respondent avers that he merely parked the website, and did not intend or expect such content to appear without his explicit consent. Respondent states that he is willing to place a placeholder website until the new website is finished, thus negating the potential for competing hyperlinks. The Panel finds this case to be similar to that of Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, wherein the panel refused to find bad faith when it appeared the respondent had a genuine disinterest in ever profiting from competing hyperlinks, and found that respondent had no idea such hyperlinks were appearing on the website. See Elec. Arts. Inc. v. Abstract Holdings Int’l LTD , FA 1415905 (Nat. Arb. Forum Jan. 4, 2012) (neglecting to find bad faith registration and use because the panel determined that the respondent did not want, or know about, the competing hyperlinks found on the resolving website).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blucigsreview.net> domain name REMAIN WITH Respondent.
R. Glen Ayers
R. Glen Ayers, Panelist
Dated: July 26, 2013
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