Lorillard Technologies, Inc. v. ICS inc.
Claim Number: FA1306001504087
Complainant is Lorillard Technologies, Inc. (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is ICS inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwblucig.com>, registered with Tucows.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.
On June 10, 2013, Tucows confirmed by e-mail to the National Arbitration Forum that the <wwwblucig.com> domain name is registered with Tucows and that Re-spondent is the current registrant of the name. Tucows has verified that Re-spondent is bound by the Tucows 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 June 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2013 by which Re-spondent 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@wwwblucig.com. Also on June 12, 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 July 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 uses its BLU CIGS mark in connection with the marketing of elec-tronic cigarettes and related goods and services.
Complainant holds a registration, on file with the Canadian Intellectual Property Office (“CIPO”), for the BLU CIGS mark (Reg. No. TMA805311, registered Aug-ust 25, 2011).
Respondent registered the contested <wwwblucig.com> domain name on Feb-ruary 23, 2013.
The <wwwblucig.com> domain name is confusingly similar to Complainant’s BLU CIGS mark.
Respondent is in no way affiliated with Complainant.
Respondent has never sought or obtained from Complainant permission to use the BLU CIGS mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name resolves to a website that contains hyperlinks to a variety of third-party websites.
Respondent benefits commercially from the visits of Internet users to the web-sites resolving from these hyperlinks by receiving click-through fees.
Respondent employs the domain name to mislead and divert customers away from Complainant’s legitimate business to redirect customers to competitors of Complainant.
Respondent knew of Complainant and its rights in its BLU CIGS mark when it registered the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the BLU CIGS mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the CIPO. See, for example, Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007):
The Panel finds that Complainant’s registration of the … mark with the … CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <wwwblucig.com> domain name is con-fusingly similar to Complainant’s BLU CIGS mark. The domain name contains the entire mark, minus the letter “s” and the space between the terms of the mark, and with the addition of the letters “www” and the generic Top Level Domain (“gTLD”) “.com”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a UDRP complainant’s mark in creating a contested domain name did not change the overall impression of the mark, leaving the resulting domain name confus-ingly similar to it).
See also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding that forming a domain name by the addition of the prefix “www” to the mark of another did not distinguish the domain name from the mark).
Finally see U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent is not affiliated with Complainant, and that Respondent has never sought or obtained from Complainant a license to use the BLU CIGS mark. Moreover, the pertinent WHOIS information identifies the registrant of the dis-puted <wwwblucig.com> domain name only as “ICS inc.,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (conclud-ing that a respondent was not commonly known by disputed domain names where both the relevant WHOIS information and other evidence in the record gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to a website that contains hyperlinks to a variety of third-party websites, including those of commercial competitors of complainant, and that Respondent benefits commercially from the visits of Inter-net users to these websites by receiving click-through fees. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used that domain name, which was confusingly similar to the mark of a UDRP complainant, to operate a website featuring links to websites offering goods and services unrelated to the business of that complainant).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of Complainant’s BLU CIG mark in its confusingly similar <wwwblucig.com> domain name in the man-ner alleged in the Complaint disrupts Complainant’s business. This is proof of bad faith registration and use of the domain name as provided in Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of Complainant’s BLU CIG mark in the <wwwblucig.com> shows that Respondent employs the domain name to profit from the confusion of Internet users as to the possibility of Complainant’s affiliation with the domain name, which stands as proof of bad faith registration and use of the domain name as provided in Policy ¶ 4(b)(iv).
See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel there finding that the registration and use of a domain name confusingly similar to a UDRP complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constituted bad faith under Policy ¶ 4(b)(iv).
Thus the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwblucig.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 18, 2013
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