Lorillard Licensing Company, LLC v. asds s / sd s
Claim Number: FA1406001566425
Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is asds s / sd s (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newports-online.com>, registered with Xin Net Technology Corporation.
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.
The Honorable Charles K. McCotter, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 24, 2014. The Complain was submitted in both English and Chinese.
On June 30, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <newports-online.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 29, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 18, 2014 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@newports-online.com. Also on July 29, 2014, the Chinese language 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 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. 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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the NEWPORT mark in connection with cigarettes. Complainant owns rights in the NEWPORT mark through registrations with the United States Patent and Trademark Office ("USPTO"). The <newports-online.com> domain name is confusingly similar to Complainant’s NEWPORT mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <newports-online.com> domain name, nor has Complainant authorized Respondent’s use of the mark. Respondent uses the disputed domain name to operate an online store selling cigarettes. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Respondent’s bad faith is evident on three grounds. First, Respondent’s efforts to sell cigarettes in competition with Complainant disrupts Complainant’s own business. Second, Respondent has intentionally misled Internet users as to Complainant’s affiliation with the disputed domain name in hope of profiting from the resulting confusion. Third, Respondent had knowledge of Complainant’s rights in the mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Lorillard Licensing Company, LLC, is the third largest tobacco company in the United States. Respondent uses the NEWPORT mark in connection with cigarettes. Complainant owns rights in the NEWPORT mark through registrations with the United States Patent and Trademark Office ("USPTO"). Respondent, asds s / sd s, registered the <newports-online.com> domain name on October 15, 2013. Respondent uses the disputed domain name to operate an online store selling cigarettes.
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 owns rights in the NEWPORT mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 871,160 registered June 17, 1969). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <newports-online.com> domain name is confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the NEWPORT mark while adding the letter “s,” a hyphen, the generic term “online,” and the generic top-level domain (“gTLD”) “.com.” See Philip Morris USA Inc. v. Andreas Vool / JJK LLC, FA 1544092 (Nat. Arb. Forum March 20, 2014)( the panel found the <marlboro-online.biz> domain name confusingly similar to the MARLBORO mark as the inclusion of a hyphen, the term “online,” and a gTLD did not distinguish the name from the incorporated mark); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
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).
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <newports-online.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent’s use of the mark. The WHOIS record indentifies “asds s / sd s” as registrant of the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to operate an online store selling cigarettes. Respondent’s resolving web page promotes cigarettes primarily from a competing brand. The use of a confusingly similar domain name to sell products that compete with Complainant does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s efforts to sell cigarettes in competition with Complainant disrupts Complainant’s business. The disputed domain name resolves to a site offering cigarettes for sale, primarily Marlboro. Because Respondent is using the disputed domain name to sell cigarettes in competition with Complainant, the Panel finds that Respondent has engaged in bad faith disruption pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has intentionally misled Internet users as to Complainant’s affiliation with the disputed domain name in hope of profiting from the resulting confusion. The Panel find bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent has used the disputed domain name to operate an online store selling competing cigarettes. See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant’s rights in the NEWPORT mark at the time the disputed domain name was registered. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (actual sufficient ground for finding Policy ¶ 4(a)(iii) bad faith).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newports-online.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: September 3, 2014
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