Lorillard Technologies, Inc. v. Mr Paul Pearson / Advanced Diets
Claim Number: FA1311001528825
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Mr. Paul Pearson / Advanced Diets (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flybluecig.com> and <flyingbluecig.com>, registered with GoDaddy.com, LLC.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <flybluecig.com> and <flyingbluecig.com> domain names (“the disputed domain names”) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@flybluecig.com and postmaster@flyingbluecig.com. Also on November 11, 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 November 12, 2013.
On November 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
With respect to identity or confusion
Generally, the Complainant asserts that the disputed domain names are confusingly similar to Complainant’s BLU ECIGS mark since they represent that mark in its entirety. The Complainant adds that the Respondent use of the disputed domain names is connected with the promotion of the sale of identical goods – namely electronic cigarettes. The Complainant states that the disputed domain names reflect its mark without the “S” and the addition of the common terms “FLY” or “FLYING”. More specifically, the Complainant asserts the following:
1. Complainant uses the BLU ECIGS and the BLU CIGS marks in connection with electronic cigarettes and related goods and services.
2. Complainant owns the BLU ECIGS and the BLU CIGS marks through registrations with trademark offices internationally.
3. Complainant also owns the <www.blucigs.com> website which Complainant uses to feature additional information about its goods and services.
4. Respondent’s <flybluecig.com> and <flyingbluecig.com> domain names are confusingly similar to Complainant’s BLU ECIGS and BLU CIGS marks:
a. Respondent’s <flybluecig.com> domain name removes the “S” and adds the common term “fly” to Complainant’s BLU ECIGS mark.
b. Respondent’s <flyingbluecig.com> domain name removes the “S” and adds the common term “flying” to Complainant’s BLU ECIGS mark.
c. Respondent adds the generic top-level domain (“gTLD”) “.com” to both of the disputed domain names.
With respect to rights or legitimate interests
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names by reason of a lack of affiliation or license and that there is no demonstrable use in connection with bona fide offering of goods or services.
With respect to bad faith
The Complainant states that the Respondent is intentionally using its marks to mislead and divert consumers away from its legitimate business to Respondent’s disputed domain names to promote the unauthorized sale of Blue cigs electronic cigarettes. The Complainant adds that the Respondent uses the domain names to improperly trade on the goodwill associated with its mark.
Moreover, the Complainant states that the Respondent had actual and constructive knowledge of the Complainant’s rights in its marks when Respondent registered the disputed domain names.
B. Respondent makes the following contentions:
1. Respondent is a sole trader in the United Kingdom and purchased the disputed domain names to make a brand.
2. Respondent’s <flybluecig.com> and <flyingbluecig.com> domain names are parked at <Godaddy.com> and are not the same as Complainant’s registered marks or registered domain name.
3. Respondent uses the <flybluecig.com> and <flyingbluecig.com> domain names for an approach to an airline for an in-flight magazine that has “fly blue” and “flying blue” club memberships.
The Complainant Lorillard Technologies, Inc. markets electronic cigarettes under the name BLU CIGS and BLU ECIGS. As such, the Complainant is the owner of trademark registrations and applications BLU CIGS and BLU ECIGS in multiple jurisdictions worldwide. The Complainant and its affiliates use the marks in connection with electronic cigarettes and related goods and services.
The evidence shows that the disputed domain names <flybluecig.com> and <flyingbluecig.com> do not yet provide elaborate content in that they contain various related links. The content provided under those various links are, in some occasions, related to the Complainant’s area of business.
For the reasons set out below, the Panel is of the opinion that the disputed domain names should remain in favor of the Respondent.
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 names registered by Respondent are 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 names; and
(3) the domain names has been registered and is being used in bad faith.
With regard to the issue whether the disputed domain names are identical or confusingly similar to the Complainant’s marks, the Panel holds that the Complainant has failed to meet its burden.
Contrary
to the Complainant’s assertion, the Panel holds that the addition of
“FLY” and “FLYING” along with the lack of the “S” in the disputed domain names
sufficiently differentiate the disputed domain names from the Complainant’s
marks. See Tire
Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006)(finding that even
minor changes are extremely persuasive in differentiating domain names from
marks given that consumers are aware that these small differences are key to
arriving at the sought-after website); see also Amazon.com, Inc. v.
Integration Unlimited, Inc., FA 183725 (Nat. Arb. Forum Sept. 25, 2003)
(finding the <amazonallergy.com> domain name was not confusingly similar
to the complainant’s AMAZON.COM mark because the additional term “allergy” bore
“little to no actual relationship with the activities performed under
Complainant's AMAZON.COM mark”). Given that disputed domain names not only add
an additional term to each domain, but also delete a letter from the mark
allegedly incorporated into the domains, the Panel holds that the disputed
domain names are not confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
As such, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), In doing so, the Panel may decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
As such, the Complaint is denied on this basis. Nevertheless, the Panel will comment on the “Registration and Use in Bad Faith” criteria.
With regard to bad faith, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Mere assertions of bad faith are insufficient in order for the Complainant to meet its burden under this criterion. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
It is true that Annex 2 of the Complaint (which is a copy of the homepages of flybluecig.com and flyingbluecig.com), shows, among others, links to websites related to the Complainant’s area of business. However these homepages also show a notice that reads: ”This page is provided courtesy of GoDaddy.com,LLC. Copyright © 1999-2013 GoDaddy.com, LLC. All rights reserved.” The panel is of the opinion that this copyright notice is an indication that GoDaddy LLC is the person responsible for the content of the homepages and not the Respondent. To put it another way, the Complainant has not convinced the Panel that the Respondent was responsible for the content of the webpages parked at GoDaddy.com.
In the present matter, the Panel holds that the Complainant has failed to provide convincing evidence of registration and use in bad faith by the Respondent.
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 <flybluecig.com> and <flyingbluecig.com> domain names REMAIN WITH Respondent.
Hugues G. Richard, Panelist
Dated: November 27, 2013
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