Lorillard Licensing Company, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1307001511024
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper LLP (US), California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newportcigarettecoupons.com>, registered with Internet.bs Corp.
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 Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 23, 2013.
On July 30, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <newportcigarettecoupons.com> domain name is/are registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@newportcigarettecoupons.com. Also on July 31, 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 August 26, 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 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’s Contentions
Complainant owns and uses the NEWPORT mark to identify its products and services in the cigarette and tobacco industry. Complainant owns numerous NEWPORT-formative marks through registrations with the United States Patent and Trademark Office (“USPTO”), including registrations for the NEWPORT mark (e.g., Reg. No. 1,108,876 registered December 12, 1978). Complainant began using the NEWPORT mark in 1956, and has promoted and advertised its mark continuously since that time. Complainant is currently the third largest tobacco company in the United States.
Respondent registered the <newportcigarettecoupons.com> domain name on October 23, 2006, and uses the resolving website to promote the unauthorized sale of cigarettes using Complainant’s mark. Respondent is not commonly known by the <newportcigarettecoupons.com> domain name, as Respondent has not attempted to file any trademark applications for the mark, nor does it have permission from Complainant to use the mark in any way. Respondent does not use the <newportcigarettecoupons.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent demonstrates bad faith registration and use of the domain name, by disrupting Complainant’s business through its offer of unauthorized coupons for Complainant’s products; registering a confusingly similar domain name in order to attract consumers to the resolving website; and registering the disputed domain name with actual knowledge of Complainant’s rights in the NEWPORT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 asserts rights in the NEWPORT mark based on its USPTO registrations (e.g., Reg. No. 1,108,876 registered December 12, 1978). The Panel notes that Respondent appears to reside in Chile. Previous panels have established that a trademark registration with a recognized government agency is proof of a complainant’s rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Further, prior panels have determined that a complainant is not mandated by Policy ¶ 4(a)(i) to register its mark in the same country where the respondent claims residence in order for the complainant to claim rights in the mark. 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). The Panel thus concludes that Complainant has demonstrated its rights in the NEWPORT mark via its USPTO registration.
Complainant makes the assertion that the <newportcigarettecoupons.com> domain name is confusingly similar to Complainant’s NEWPORT mark, citing the inclusion of the entire mark within the domain name, and the generic terms “cigarette” and “coupons.” The word “cigarette” describes Complainant’s products under the NEWPORT mark. The Panel concludes that adding descriptive or generic terms to the NEWPORT mark does not distinguish the domain name from Complainant’s mark. 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, Mead Johnson & Company, LLC v. Sanni, FA1460351 (Nat. Arb. Forum Oct. 12, 2012) (finding respondent’s <enfamilcouponprintable.com> domain confusingly similar to complainant’s ENFAMIL mark, and noting that a consumer may incorrectly conclude that the “coupon” referred to in the domain was authorized by the complainant). Therefore, the Panel determines that the <newportcigarettecoupons.com> domain name does not sufficiently differ from Complainant’s mark and is thus confusingly similar to the NEWPORT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent does not have permission to use the NEWPORT mark. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), held that the respondent was not commonly known by the disputed domain name, as no evidence existed supporting such a finding, including the complainant’s assertion that it did not license the respondent to use the mark. This Panel similarly concludes, based upon Complainant’s claim that it did not grant Respondent permission to use the mark, and Respondent’s lack of response to argue otherwise, that Respondent is not commonly known by the <newportcigarettecoupons.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <newportcigarettecoupons.com> domain name to host a website that displays hyperlinks to third-party websites in competition with Complainant. Complainant claims that Respondent’s attempts to mislead and divert Internet traffic for its own commercial gain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent fails to demonstrate a bona fide offering of goods or services of the disputed domain name or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii)).
Complainant states that Respondent’s bad faith registration and use is established by diverting customers away from Complainant’s legitimate business and to the disputed domain name, and displaying hyperlinks to Complainant’s competitors. The Panel finds that leading Internet consumers away from Complainant’s website to a different website containing competing hyperlinks constitutes disruptive use, and determines that Respondent uses the <newportcigarettecoupons.com> domain name in bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent’s bad faith registration and use is apparent by its creation of confusion between the disputed domain name and Complainant’s business. Complainant argues that Respondent capitalizes on the confusingly similar domain name by attracting Internet users that would otherwise visit Complainant’s website. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), stated that by using the disputed domain name to operate a website featuring links to competing and commercial websites in exchange for commercial gain, the respondent registered and used the domain name in bad faith. This Panel likewise finds that Respondent registered the domain name with the intent of confusing Internet users, and is attracting Internet traffic to its website in order to make a profit, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant lastly alleges that the famous nature of its NEWPORT trademark and Complainant’s longstanding ownership and use of the marks is evidence of Respondent’s actual knowledge of its mark. The Panel agrees, and finds that Respondent had actual knowledge of Complainant’s rights in the NEWPORT mark, as further shown by the content of the resolving website, and the similarity between Complainant’s mark and the disputed domain name. This inferred actual knowledge demonstrates bad faith registration under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there were 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 covered an industry towards which Respondent's services were marketed).
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 <newportcigarettecoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 9, 2013
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