WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lorillard Technologies Inc. v. Blu Ecigs, Perfect Privacy, LLC
Case No. D2014-0678
1. The Parties
The Complainant is Lorillard Technologies Inc. of Greensboro, North Carolina, United States of America, represented by Dykema Gossett PLLC, United States of America.
The Respondent is Blu Ecigs, Perfect Privacy, LLC of Drums, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <blucigsmail.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2014. On April 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 4, 2014.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on June 18, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant annexed to its Complaint representative examples of its registrations for the trademarks BLU CIGS and BLU ECIGS ("Complainant's Trademarks"), in the United States, Canada and (through extensions of protection for International Registrations) in Austria, Australia, Benelux, China, Switzerland, Denmark, Spain, France, Great Britain, Ireland, Italy, Japan, Korea, Portugal, and Sweden.
Of these, the earliest is a registration for the mark BLU CIGS in connection with cigarettes and electronic cigarettes. The registration was issued in 2010 and claims first use as of 2009.
The disputed domain name was registered on February 14, 2014.
5. Parties' Contentions
Complainant asserts that it uses Complainant's Trademarks in connection with electronic cigarettes and related goods and services. Complainant's predecessor commenced using Complainant's Trademarks in 2009. Complainant asserts that its BLU ECIGS trademark is the leading electronic cigarette brand in the United States.
Complainant asserts that it continuously and actively promotes its BLU ECIGS electronic cigarettes, and uses the trademarks in domain names and on websites in connection with Complainant's online presence. Complainant's official website is "www.blucigs.com".
Complainant asserts that the disputed domain name is confusingly similar to Complainant's Trademarks because the disputed domain name is simply a combination of Complainant's well known BLU CIGS mark with the generic term "mail", and that Respondent has wholly incorporated Complainant's BLU CIGS mark in the disputed domain name. Complainant asserts that the disputed domain name is a virtually identical copy of Complainant's mark, registered as a domain name in the ".com" generic Top-Level domain ("gTLD").
Complainant asserts that Respondent has no rights or legitimate interests in the term "blu cig" or "blucigsmail.com" because Respondent is not affiliated with Complainant; because Complainant is the rightful owner of Complainant's Trademarks and Respondent is simply trading off of the goodwill created by Complainant; and because Respondent never sought or obtained a license from Complainant to use Complainant's Trademarks, nor has Respondent attempted to file any trademark applications for the marks BLU CIGS or BLU CIGS MAIL, as a legitimate trademark owner would do. Complainant asserts that there is no demonstrable use by Respondent of the disputed domain name in connection with a bona fide offering of goods or services; instead, the disputed domain name resolves to a Google search engine page.
Complainant asserts that Respondent has apparently used the disputed domain name for commercial gain to mislead and divert consumers in the promotion of the sale of competing electronic cigarettes using Complainant's Trademarks. Complainant asserts that the disputed domain name resolves to a search results page using the Google search engine. Complainant asserts that Respondent has and continues to benefit commercially from routing traffic to Google's search engine by receiving click-through fees, and that such use misleads and diverts Internet users for Respondent's commercial gain, to Complainant's detriment, and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Complainant asserts that Respondent has registered and is currently using the disputed domain name in bad faith because Respondent's intentional use of Complainant's Mark to mislead and divert customers away from Complainant's legitimate business to the Google search engine amounts to use of the disputed domain name in bad faith.
Complainant asserts that Internet users are likely to be confused by the similar disputed domain name <blucigsmail.com> and attracted to the linked websites looking to purchase BLU CIGS electronic cigarettes. Complainant asserts that Respondent's creation of confusion as to its affiliation with Complainant in order to realize a commercial gain evidences bad faith registration and use under the Policy, paragraph 4(b)(iv).
Complainant also asserts that Respondent's use of Complainant's Trademarks to confuse customers into visiting a website that is unaffiliated with the trademark owner also constitutes infringement, even if the customer ultimately realizes that there is no connection with the trademark owner. Complainant asserts that Respondent registered the disputed domain name in a manner calculated to trade improperly on the goodwill of Complainant's Trademarks, and that that use constitutes trademark infringement in bad faith.
Complainant also asserts that Respondent had a bad faith intent to register and use the disputed domain name under the Policy, paragraph 4(b)(iii). Specifically, by registering the disputed domain name, Respondent has prevented Complainant from using its trademark as a domain name in the ".com" gTLD namespace.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [ Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [ Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant's Trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
Respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
"(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c)."
Where, as here, Respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <blucigsmail.com> is confusingly similar to Complainant's registered trademark BLU CIGS. Rather than serving to distinguish Respondent's domain name from Complainant's Trademarks, adding the generic term "mail" to the registered term BLU CIGS is likely to lead Internet users to believe that they can send email to Complainant regarding its BLU CIGS products on Respondent's website. Adding the generic term "mail" to Complainant's trademark does not avoid the confusing similarity between the disputed domain name and the mark. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There is no evidence that Complainant has licensed or authorized Respondent to use Complainant's Trademarks, or that Respondent has any authorized relationship with Complainant or otherwise has permission to apply for any domain name incorporating Complainant's Trademarks. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel would have welcomed more substantial assertions and evidence regarding paragraph 4(a)(iii) of the Policy. A close inspection of the website asserted to be Respondent's shows that Respondent's domain name resolves not to a "parking page" or a links page with links to competitive products, or even to resellers of Complainant's own products, but to search results for Complainant's own webpage. The only other search results are for reviews of Complainant's products. As a result, even if Internet users are being diverted from Complainant's official website, they are being redirected right back. See PRL USA Holdings, Inc. v. Polo, WIPO Case No. D2002-0148 (no bad faith where respondent's domain name redirects traffic back to complainant's website, and there is no other evidence of bad faith).
More importantly, there appears to be a disconnect between the Google search results page "linked" to the disputed domain name and the domain name itself. The record indicates that although the disputed domain name is active, it is not linked to an active website (or even an inactive website). Because of this, and because the image of Respondent's website provided by Complainant was so small as to be nearly illegible, the Panel took the step of entering the disputed domain name into a web browser (the consensus view is that UDRP panels may perform independent research when reaching a decision, and specifically may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 4.5; Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768), and reached a search page of links from the Panel's own Internet provider, with the notation that the domain name is inactive. Absent other explanation, the Panel draws from this research and from the evidence of record that the disputed domain name is inactive, the conclusion that the Internet search page and links thereon referenced in the Complaint were generated not by action or direction of Respondent, but by Complainant's own Internet browser. As a result, the Panel finds that the disputed domain name is inactive and is being passively held.
In considering whether the passive holding of a domain name satisfies the requirements of paragraph 4(a)(iii), the Panel "must give close attention to all the circumstances of the Respondent's behavior." A remedy can be obtained under the Policy "only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith." Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the circumstances of Respondent's behavior convince the Panel that Respondent's passive holding of the disputed domain name is being done in bad faith. Respondent's name is listed as "Blu ECigs", a name that does not match Respondent's disputed domain name, but that does match identically another of Complainant's Trademarks. Respondent's first name "Blu" is the same misspelling of the word "blue" that constitutes the first portion of both of Complainant's Trademarks. "Blu" has no English-language meaning, and none has been provided other than as part of Complainant's Trademarks. Respondent has failed to explain these facts, and from Respondent's default, the Panel draws inferences that Respondent had knowledge of Complainant and its trademark rights prior to or at the time of registration of the disputed domain name, and that there is no conceivable use that could be made of the disputed domain name that would not amount to an infringement of the Complainant's trade mark rights. See Orbis Holdings Limited v. Lu A Feng and Orbis Search, WIPO Case No. D2007-0515.
Absent other explanation, and in view of Respondent's default, the Panel finds from Respondent's behavior that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <blucigsmail.com> be transferred to the Complainant.
Jordan S. Weinstein
Date: July 2, 2014