Lorillard Licensing Company, LLC v. ARVAND SABETIAN / ARVIXE, LLC
Claim Number: FA1311001530396
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is ARVAND SABETIAN / ARVIXE, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboronewport.com>, registered with ENOM, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2013; the National Arbitration Forum received payment on November 18, 2013.
On November 18, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <marlboronewport.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@marlboronewport.com. Also on November 26, 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 December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <marlboronewport.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the <marlboronewport.com> domain name.
3. Respondent registered and uses the <marlboronewport.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns rights in its NEWPORT mark through registrations of the mark with the United States Patent and Trademark Authority (“USPTO”) (e.g., Reg. No. 1,108,876 registered December 12, 1978), used in connection with its NEWPORT cigarettes and related goods and services.
Respondent registered the disputed domain name on March 4, 2013, and uses it to resolve to an online store that sells Complainant’s cigarette products without Complainant’s authorization, as well as cigarette products of Complainant’s competitors.
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 Panel finds that Complainant has adequately established rights in the NEWPORT mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. Previous panels have held that a complainant’s registration of a mark with the USPTO is sufficient to establish the complainant’s rights in the mark under Policy ¶ 4(a)(i). See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <marlboronewport.com> domain name is confusingly similar to Complainant’s NEWPORT mark because the domain name fully incorporates the mark and merely adds the term “Marlboro,” the brand name of a third party that also sells cigarette products, and the irrelevant generic top-level domain (“gTLD”) “.com.” 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.”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002), where the panel held that the disputed domain name was confusingly similar to the complainant’s mark where the domain name appropriated the complainant’s mark as well as the marks of the complainant’s competitors (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim.”). Thus, the Panel finds that the <marlboronewport.com> disputed domain name is thus confusingly similar to the NEWPORT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known as <marlboronewport.com> pursuant to Policy ¶ 4(c)(ii) and that Complainant has never authorized Respondent to use the NEWPORT mark in a domain name. The WHOIS information identifies the registrant of the <marlboronewport.com> domain name as “ARVAND SABETIAN / ARVIXE, LLC.” Previous panels have held that a respondent is not commonly known by a disputed domain name where there is nothing in the record, including the WHOIS information, to suggest otherwise and the complainant alleges that it has not given the respondent permission to use its mark. See, e.g., 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(c)(ii).
Complainant further alleges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the domain name resolves to an online store that sells Complainant’s cigarette products without Complainant’s authorization, as well as cigarette products of Complainant’s third-party competitors. The Panel notes the screenshot provided by Complainant showing that Respondent’s website offers “Newport 100s Cigarette” products, as well as cigarette products from brands such as Marlboro and L&M. Previous panels have held that a respondent’s use of a disputed domain name to sell the complainant’s products as well as competing products does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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, as well as other brands of perfume, is not bona fide use or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not using the <marlboronewport.com> domain name is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the <marlboronewport.com> domain name disrupts Complainant’s business by redirecting Internet users to Respondent’s competing website, demonstrating bad faith registration and use under Policy ¶ 4(b)(iii). Prior panels have found that a respondent demonstrates bad faith disruption under Policy ¶ 4(b)(iii) by using the disputed domain name to offer the complainant’s products without authorization or to offer products of the complainant’s competitors. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv), because the disputed domain name creates a likelihood of confusion with Complainant’s NEWPORT mark and Respondent is profiting from this confusion in the form of increased Internet traffic to its online store. The Panel agrees and finds that the website resolving from the disputed domain name is commercially profitable, because it displays a variety of cigarette products and invites Internet users to “add” these products to their online shopping “cart.” See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). The Panel finds that Respondent has demonstrated bad faith registration and use of the <marlboronewport.com> domain name pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered the <marlboronewport.com> domain name with actual notice of Complainant’s rights in the NEWPORT mark. Previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering a disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). Previous panels have inferred that a respondent had actual notice of the complainant’s mark where there is a clear link between the mark and the content displayed on the at-issue website. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Here, the Panel finds that there is a clear link between Complainant’s NEWPORT mark and the cigarette products advertised on Respondent’s website, and that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the NEPWORT mark. This is further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboronewport.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page