Lorillard Licensing Company, LLC v. PrivacyProtect.org / Domain Admin
Claim Number: FA1210001467712
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettesonline.com>, registered with DomainContext, 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 October 17, 2012; the National Arbitration Forum received payment on October 17, 2012.
After numerous requests, the Registrar, DomainContext, Inc., has not confirmed to the National Arbitration that the <newportcigarettesonline.com> domain name is registered with DomainContext, Inc. or that the Respondent is the current registrant of the name. The Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On October 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@newportcigarettesonline.com. Also on October 30, 2012, 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 4, 2012, 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.
A. Complainant makes the following assertions:
1. Respondent’s <newportcigarettesonline.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
2. Respondent does not have any rights or legitimate interests in the < newportcigarettesonline.com > domain name.
3. Respondent registered or used the < newportcigarettesonline.com > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant uses the NEWPORT mark in relation to its cigarette products and related goods, and has used the mark in commerce since 1956.
2. Complainant is the third largest tobacco company in the United States and leads sales in its menthol cigarettes.
3. Complainant has and continues to expend substantial resources to promote its name and products, and owns several trademark registrations for its NEWPORT mark, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 871,160 registered June 17, 1969). See Annex 6.
4. Respondent registered the <newportcigarettesonline.com> domain name on June 26, 2012, and uses the resolving website to make unauthorized sales of cigarettes using Complainant’s NEWPORT mark.
5. Respondent currently sells products identical to Complainant’s products, and does not have rights or legitimate interests in the domain name. The <newportcigarettesonline.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
6. Respondent is in no way affiliated with Complainant and uses the disputed domain name in bad faith by both disrupting Complainant’s business and by making a profit by confusing Internet consumers and luring them to its commercial website.
7. Respondent’s use of the <newportcigarettesonline.com> domain name makes it apparent that Respondent registered the domain name with actual and constructive notice of Complainant’s rights in the NEWPORT mark.
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 alleges to have rights to the NEWPORT mark by way of its several USPTO registrations (e.g., Reg. No. 871,160 registered June 17, 1969). The panel in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), held that owning a trademark registration with the USPTO establishes an entity’s rights in the mark. The Panel similarly concludes that Complainant’s trademark registration with the USPTO demonstrates its rights in the NEWPORT mark under Policy ¶ 4(a)(i). See 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.”). Further, the Panel finds that the fact that Complainant did not register its mark in Respondent’s country of residence does not affect the Policy ¶ 4(a)(i) analysis. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that the <newportcigarettesonline.com> domain name is confusingly similar to the NEWPORT mark due to the inclusion of the NEWPORT mark in its entirety and the use of the descriptive word “cigarettes” and the generic word “online.” The Panel also observes the inclusion of the generic top-level domain (“gTLD”) “.com” within the disputed domain name. The Panel determines that by using the entire mark as well as descriptive and generic terms and a gTLD, the <newportcigarettesonline.com> domain name is confusingly similar to Complainant’s NEWPORT mark for the purposes of Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”).
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.”).
The Panel notes that Complainant does not put forth the allegation that Respondent is not commonly known by the <newportcigarettesonline.com> domain name; however, the Panel observes that Complainant includes in its evidence the WHOIS information associated with the domain name, which identifies the registrant as “PrivacyProtect.org / Domain Admin.” See Annex 1. The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), concluded that the respondent was not commonly known by the domain name where the WHOIS information did not match the domain name. The Panel finds that the WHOIS information for the <newportcigarettesonline.com> domain name does not demonstrate that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii) and therefore Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent has never sought a license from Complainant to post content on the resolving website referring to Complainant’s offered goods and has no association with Complainant’s business. Complainant argues that Respondent uses the <newportcigarettesonline.com> domain name to host a website that operates an online store to sell products identical to Complainant’s products, which fails to demonstrate Respondent’s rights or legitimate interests. The Panel concludes that Respondent’s use of the <newportcigarettesonline.com> domain name to sell products identical to those sold by Complainant fails to demonstrate 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). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Complainant argues that Respondent’s bad faith registration and use is shown by Respondent’s disruptive use of the resolving website, which sells products in direct competition with Complainant’s products. Complainant asserts that Respondent’s unauthorized sale of its products amounts to bad faith. The panel in Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), concluded that the respondent registered the disputed domain name in bad faith when it maintained a website in direct competition with the complainant’s business. The Panel finds that Respondent registered and uses the <newportcigarettesonline.com> domain name in bad faith under Policy ¶ 4(b)(iii) by hosting a website that sells products in competition with Complainant, thereby disrupting Complainant’s business.
Complainant contends that Respondent’s use of the domain name to make sales and divert consumers away from Complainant’s business is evidence of bad faith registration and use. The Panel determines that Respondent makes a profit from its Internet sales as a result of attracting consumers to its website by using a confusingly similar domain name, which demonstrates Respondent’s bad faith registration and use of the <newportcigarettesonline.com> domain name under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Complainant makes the assertion that Respondent registered the <newportcigarettesonline.com> domain name in bad faith due to Respondent’s “actual or constructive” knowledge of the NEWPORT mark prior to registering the disputed domain name. Complainant alleges that Complainant’s trademark registration fifty-six years prior to Respondent’s domain registration provides proof of Respondent’s knowledge of the mark. The Panel finds that Complainant’s trademark registration provides Respondent with constructive knowledge, and concludes that constructive knowledge does not sufficiently support a finding of 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). However, the Panel concludes that by using the disputed domain name to sell identical products to those sold by Complainant, Respondent demonstrates that it had actual knowledge of Complainant’s NEWPORT mark prior to registering the <newportcigarettesonline.com> domain name, which is evidence of Respondent’s bad faith registration and use. See 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, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newportcigarettesonline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 17, 2012
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