Lorillard Licensing Company, LLC v. Sitnikov Yevgeniy / Yevgeniy Sitnikov; Yevgeniy Sitnikov / N/A; Evgeniy V Sitnikov / Private Person; International signal / Yevgeniy Sitnikov
Claim Number: FA1302001486176
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Sitnikov Yevgeniy / Yevgeniy Sitnikov; Yevgeniy Sitnikov / N/A; Evgeniy V Sitnikov / Private Person; International signal / Yevgeniy Sitnikov (“Respondent”), Kazakhstan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapnewportcigarettes.org>, <cheapcigarettes.pro>, <buycigarettesonline.pro>, and <buynewportcigarettesonline.net>, registered with Todaynic.com, Inc.; PDR Ltd. d/b/a PublicDomainRegistry.com; and eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 20, 2013.
On February 25, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <cheapcigarettes.pro> and <buycigarettesonline.pro> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Yveneiy Sitnikov and Evgeniy V Sitnikov are the current registrants of the names. On February 27, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <buynewportcigarettesonline.net> domain nam is registered with eNom, Inc. and that Yevgeniy Sitnikov is the current registrant of the name. On March 3, 2013, Todaynic.com confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcigarettes.org> domain name is registered with Todaynic.com and that Sitnikov Yevgeniy is the registrant of the name. Todaynic.com, Inc., PDR Ltd. d/b/a PublicDomainRegistry.com, and eNom, Inc. have verified that Respondent is bound by the Todaynic.com, Inc., PDR Ltd. d/b/a PublicDomainRegistry.com, and eNom, Inc. registration agreements 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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@cheapnewportcigarettes.org, postmaster@cheapcigarettes.pro, postmaster@buycigarettesonline.pro, postmaster@buynewportcigarettesonline.net. Also on March 8, 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 April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEWPORT mark. Respondent’s cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names are confusingly similar to Complainant’s NEWPORT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names, and that Respondent registered and uses the domain names in bad faith.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The record reflects the following: the WHOIS information for all four disputed domain names lists identical or nearly identical registrant mailing addresses, email addresses, and phone numbers; the <cheapnewportcigarettes.org> and <cheapcigarettes.pro> domain names use the same Internet Service Provider, the Endurance International Group, Inc., and the same IP address; the <cheapnewportcigarettes.org> domain name forwards to the <cheapcigarettes.pro> domain name; and the <buynewportcigarettesonline.net> domain name forwards to the <buycigarettesonline.pro> domain name. In addition to identical addresses and phone numbers, the registrant names for each disputed domain name appear to be either identical or merely slight variations of each other.
Accordingly, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant claims rights in the NEWPORT trademark pursuant to its registrations of the mark with the USPTO (e.g. Reg. No. 1,108,876 registered Dec. 12, 1978) for the sale and promotion of cigarettes. Registration with the USPTO is sufficient to establish rights in a mark. 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.”). Moreover, a complainant need not register a mark in the country of a respondent to establish rights in that country. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel holds that Complainant has established rights in the NEWPORT mark for the purposes of Policy ¶ 4(a)(i).
Complainant claims that the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names are identical or confusingly similar to Complainant’s NEWPORT mark. Complainant notes that both domain names contain the NEWPORT mark in its entirety, with the addition of generic words such as “cheap,” “buy,” and “online,” as well as the descriptive word “cigarettes.” Generic words such as “cheap,” “buy,” and “online” have been found to be insufficient to distinguish a domain name from a mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Further, product-describing words such as “cigarettes” have also not been found by past panels to negate a finding of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Finally, the affixation of a generic top-level domain (“gTLD”) such as “.org” or “.net” is irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names are confusingly similar to Complainant’s NEWPORT mark within the meaning of Policy ¶ 4(a)(i).
In regards to the <buycigarettesonline.pro> and <cheapcigarettes.pro> domain names, Complainant notes only that the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names forward users to these domain names. While this supports a claim that the domain names are owned by the same Respondent, Complainant makes no contentions that the <buycigarettesonline.pro> and <cheapcigarettes.pro> domain names themselves are confusingly similar to Complainant’s mark. These domain names do not contain any version of the NEWPORT mark. Therefore, the Panel declines to find that the <buycigarettesonline.pro> and <cheapcigarettes.pro> domain names are identical or confusingly similar to Complainant’s NEWPORT mark.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the <buycigarettesonline.pro> and <cheapcigarettes.pro> domain names, the Panel declines to analyze the other two elements of the Policy with respect to these domain names. 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i) with respect to the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has not been commonly known by the disputed domain names and fails to establish rights or legitimate interests under Policy ¶ 4(c)(ii). Complainant notes that it has not been affiliated with Respondent nor licensed Respondent to use Complainant’s NEWPORT mark. The WHOIS records for the disputed domain names list “Sitnikov Yevgeniy / Yevgeniy Sitnikov,” “Yevgeniy Sitnikov / N/A,” “Evgeniy V Sitnikov / Private Person,” and “International signal / Yevgeniy Sitnikov” as the registrants. Because the lack of authorization and nominally unsupportive WHOIS information is strong evidence that a respondent is not commonly known by a disputed domain name, the Panel holds that Respondent is not commonly known by the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names under Policy ¶ 4(c)(ii). See 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).
Complainant also argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, thus failing to establish rights under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that the disputed domain names resolve to websites where Respondent operates an unauthorized online store that sells products identical to Complainant’s products. Such has been found to be not a bona fide offering or a legitimate use of a domain name. 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). Therefore, the Panel may hold that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii) with respect to the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names.
Complainant alleges that Respondent has shown bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business as a competitor. The unauthorized sale of a complainant’s products is an example of disruptive activity under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent registered and is using the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant also asserts bad faith under Policy ¶ 4(b)(iv), claiming that Respondent is intentionally diverting customers from Complainant’s business by creating confusing with Complainant’s NEWPORT mark for Respondent’s own commercial gain. The sale of a complainant’s products at a confusingly similar domain name has been found to be evidence of bad faith diversion under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”). Accordingly, the Panel holds that Respondent registered and is using the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names in bad faith under Policy ¶ 4(b)(iv).
Finally Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the NEWPORT mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website, as well as Complainant’s decades-long use and registration of the mark, indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and therefore determines that Respondent registered the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii) with respect to the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names.
Having established all three elements required under the ICANN Policy with respect to the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapnewportcigarettes.org> and <buynewportcigarettesonline.net> domain names be TRANSFERRED from Respondent to Complainant and the <buycigarettesonline.pro> and <cheapcigarettes.pro> domain names REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: April 15, 2013
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