Lorillard Licensing Company, LLC v. Nish Patel
Claim Number: FA1403001548643
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is Nish Patel (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapnewportssupplier.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2014; the National Arbitration Forum received payment on March 14, 2014.
On March 14, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <cheapnewportssupplier.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 March 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 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@cheapnewportssupplier.com. Also on March 21, 2014, 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 April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has used the NEWPORT mark since at least 1956 in connection with cigarettes and related goods and services. Complainant is the third largest tobacco company in the United States.
Complainant has rights in the NEWPORT mark, used in connection with the manufacture and sale of cigarettes.
Complainant owns registrations for the NEWPORT mark with the United States Patent and Trademark Office (“USPTO”) for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978).
Respondent’s <cheapnewportssupplier.com> domain name is confusingly similar to Complainant’s NEWPORT mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive terms “cheap” and “supplier.”
Respondent does not have any rights or legitimate interests in the <cheapnewportssupplier.com> domain name. Complainant has not authorized Respondent to use its mark in any way. The <cheapnewportssupplier.com> domain name resolves to a website featuring links to competing third-party websites.
Respondent registered and is using the <cheapnewportssupplier.com> domain name in bad faith. Respondent is disrupting Complainant’s business by using the disputed domain name to promote links of Complainant’s competitors. Respondent is misleading Internet users and obtaining commercial gain via click through links displaying on the resolving website, and the links direct Internet users to Complainant’s competitors.
Respondent had knowledge of Complainant’s NEWPORT mark prior to registering the disputed domain name because Complainant’s mark was registered fifty-seven year prior to Respondent registering the <cheapnewportssupplier.com> domain name.
Respondent registered the <cheapnewportssupplier.com> domain name on April 28, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for the NEWPORT mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the NEWPORT mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <cheapnewportssupplier.com> domain name addresses a website featuring links to competing third-party websites.
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 at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Complainant’s ownership of USPTO trademark registrations for NEWPORT demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the domain name’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name incorporates Complainant’s mark in its entirety, adds an “s,” adds the descriptive terms “cheap” and “supplier,” and then appends the top-level domain name “.com” thereto. The addition of a single letter to Complainant’s trademark does nothing to differentiate the at-issue domain name from the trademark for the purposes of the Policy. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Likewise, the addition of the two descriptive terms to the NEWPORT mark does not materially differentiate the domain name from Complainant’s mark. In fact, the particular added terms make it clear that the domain name is concerned with Complainant’s NEWPORT brand. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”). Finally, it is well settled that the necessary top-level domain name (here “.com”) is irrelevant for the purposes of confusing similarity 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 Respondent’s <cheapnewportssupplier.com> domain name is confusingly similar to Complainant’s NEWPORT trademark under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the <cheapnewportssupplier.com> domain name lists “Nish Patel” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <cheapnewportssupplier.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the <cheapnewportssupplier.com> domain name to address a website featuring links to competing third-parties. Using the domain name to link to Complainant’s competitors suggests neither a bona fide offering of goods and services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(i). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, the links on Respondent’s <cheapnewportssupplier.com> website include “Manufacturers Supplier,” “Smoke Free Cigarettes,” and “Buy Cheap Cigarettes.” By using the at-issue domain name to promote links concerning or related to Complainant’s competition, Respondent thereby disrupts Complainant’s business. Importantly, using the confusingly similar <cheapnewportssupplier.com> domain name in this manner demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Next, Respondent benefits because the confusingly similar domain name misleads Internet users into believing that the website addressed by the domain name is somehow affiliated with, or sponsored by, Complainant when it is not. Wayward visitors arriving at the <cheapnewportssupplier.com> website are, because of the confusion created the website’s domain name, poised to navigate to Complainant’s competitors via the website’s pay-per-click links. These circumstances demonstrate bad faith pursuant to paragraph 4(b)(iv) of the Policy. See Associated 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.’”).
Finally, Respondent had knowledge of Complainant’s NEWPORT mark prior to registering the at-issue domain name. Complainant’s well-known trademark was registered fifty-seven years prior when Respondent registered the <cheapnewportssupplier.com> domain name. Additionally, the descriptive terms included in the at-issue domain name along with Complainant’s mark are suggestive of the retail distribution channel where Complainant ultimately markets its products. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the NEWPORT mark when it registered the <cheapnewportssupplier.com> domain name. See Jupiters Ltd. v. Hall, D2000-0574) (WIPO Aug. 3, 2000) (noting "the fact that Complaint's name and trade mark is so well and widely known ... makes it inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests");see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the connection 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"). Given the foregoing, it appears that Respondent registered the at-issue domain name precisely for the purpose of inappropriately trading on the goodwill associated with Complainant’s NEWPORT trademark. Registering a domain name it knew to be confusingly similar to the trademark of another further indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). 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); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapnewportssupplier.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 21, 2014
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