Lorillard Licensing Company, LLC v. Andy Huang / sle
Claim Number: FA1305001497789
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is Andy Huang / sle (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newport-cigarettes.us>, registered with Name.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a hard copy of the Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 8, 2013.
On May 2, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <newport-cigarettes.us> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”)..
On May 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@newport-cigarettes.us. Also on May 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 in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
a) Complainant has rights in the NEWPORT mark, used in connection with cigarettes and related goods and services. Complainant asserts that it is the owner of registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978) with the United States Patent and Trademark Office (“USPTO”).
b) The disputed domain name is identical or confusingly similar to Complainant’s mark. The <newport-cigarettes.us> domain name uses both the NEWPORT mark in its entirety. Complainant also contends that “cigarettes” is a descriptive term related to Complainant’s cigarette business, and the term is insufficient to create a distinction from Complainant’s mark. Further, the addition of a hyphen and a generic top-level domain (“gTLD”) are not relevant to this analysis.
c) Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not affiliated in any way with Complainant, nor has Complainant authorized or licensed Respondent’s use of the trademarks.
b. Respondent is using the disputed domain name to divert consumers and obtain commercial gain. The disputed domain name resolves to a website displaying links to competing third-party websites.
d) Respondent registered and is using the disputed domain name in bad faith.
a. Respondent’s registration and use of the disputed domain name is disrupting Complainant’s business. The disputed domain name resolves to a website displaying competing and non-competing third-party websites.
b. Respondent is using the disputed domain name to divert consumers and obtain commercial gain.
c. Respondent had actual knowledge of Complainant’s mark prior to registering the disputed domain name because of Complainant’s long-standing use of the NEWPORT trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <newport-cigarettes.us> domain name on April 13, 2010.
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 or 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 contends that it has rights in the NEWPORT mark, used in connection with cigarettes and related goods and services. Complainant asserts that it is the owner of registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered Dec. 12, 1978) with the USPTO. Therefore, the Panel finds that Complainant has rights in the NEWPORT mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges that the disputed domain name is identical or confusingly similar to Complainant’s mark, as the <newport-cigarettes.us> domain name uses the NEWPORT mark in its entirety. Further, Complainant contends that “cigarettes” is a descriptive term related to Complainant’s cigarette business, and the term is insufficient to create a distinction from Complainant’s mark. The Panel agrees that the descriptive term “cigarettes” does not sufficiently differentiate the disputed domain name from Complainant’s longstanding NEWPORT mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under UDRP ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Further, the Panel finds that the addition of a hyphen is not relevant for the purpose of Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens are irrelevant for purposes of the UDRP).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <newport-cigarettes.us> domain name. Respondent therefore does not have rights and legitimate interests in the domain pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not affiliated in any way with Complainant, nor has Complainant authorized or licensed Respondent’s use of its trademarks. The Panel notes that the WHOIS information lists “Andy Huang / sle” as the domain name registrant. Past panels have found that the WHOIS record is often suggestive of whether a respondent is known by a domain name. See e.g., Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003). In light of the evidence presented by Complainant, coupled with Respondent’s failure to present any evidence to the contrary, the Panel finds that Respondent is not commonly known by the <newport-cigarettes.us> domain name pursuant to Policy ¶ 4(c)(iii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent is using the disputed domain name to divert consumers and obtain commercial gain. Complainant claims that the disputed domain name resolves to a website displaying links to competing and non-competing third-party websites. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, this Panel finds that Respondent’s use of the <newport-cigarettes.us> domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the disputed domain name is disrupting Complainant’s business. Complainant asserts that the disputed domain name resolves to a website displaying links to competing and non-competing third-party websites. Such conduct has been found to be evidence of bad faith registration and use 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 UDRP ¶ 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). The Panel therefore finds that Respondent’s conduct constitutes Policy ¶ 4(b)(iii) disruption of Complainant’s business and thus Respondent’s registration or use of the <newport-cigarettes.us> domain name is in bad faith under Policy 4(b)(iii).
Complainant asserts that Respondent is using the disputed domain name to divert consumers and obtain commercial gain, demonstrating that the disputed domain name resolves to a website displaying links to competing and non-competing third-party websites. Such conduct has been found to be evidence of bad faith registration and use under Policy 4(b)(iv). Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv).”) Similarly, this Panel finds that Respondent’s conduct constitutes an attempt to wrongfully attract Internet traffic for commercial gain under Policy ¶ 4(b)(iv) and constitutes bad faith registration or use.
Complainant contends that Respondent had knowledge of Complainant’s marks prior to registering the disputed domain name because of Complainant’s registration and long-standing use of the NEWPORT trademark. The Panel infers that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name, which incorporates Complainant’s mark in its entirety, in bad faith under Policy ¶ 4(a)(iii). See 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).
Thus, Complainant has also 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 <newport-cigarettes.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 20, 2013
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