WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lorillard Licensing Company, LLC v. Registration Private, DomainsByProxy.com LLC / MD Parrez Uddin
Case No. D2016-2154
1. The Parties
The Complainant is Lorillard Licensing Company, LLC of Winston-Salem, North Carolina, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private, DomainsByProxy.com LLC of Scottsdale, Arizona, United States / MD Parrez Uddin of Madukhali, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <newportcigarettespleasure.com> (the "Domain Name") is registered with GoDaddy.com, LLC. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2016.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 29, 2016. 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
The Complainant is the owner of, inter alia, registrations for NEWPORT and NEWPORT PLEASURE in the United States for tobacco products with first use in commerce recorded as 1956 and 1974 respectively.
The Domain Name has been attached to a web site selling tobacco products not of the Complainant's manufacture.
5. Parties' Contentions
The Complainant's contentions can be summarised as follows:
The Complainant founded in 1760 is the owner of, inter alia, registrations for NEWPORT and NEWPORT PLEASURE in the United States for tobacco products with first use in commerce recorded as 1956 and 1974 respectively. It owns and uses the domain name <newport-pleasure.com>. The Complainant or its predecessors have sold tobacco products under the NEWPORT mark continuously for nearly sixty years.
The Domain Name is identical or confusingly similar to the Complainant's well-known NEWPORT and NEWPORT PLEASURE marks. The only other element in the Domain Name is the generic term "cigarettes" which the Complainant sells and which does not distinguish the Domain Name and exacerbates confusion. Internet users will reasonably believe that the Domain Name leads to a web site which is related to or approved by the Complainant when this is not the case.
The Domain Name is not a name by which the Respondent is known and the Respondent has no rights or legitimate interests in it or licence or permission to use it.
The Respondent registered the Domain Name in 2014 many years after the NEWPORT mark became well known for cigarettes. The Respondent has profited by directing the Domain Name to a web site that offers multiple brands of cigarettes including competing brands. This is not a bona fide offering of goods and is registration and use in bad faith. Even if the Respondent is selling genuine NEWPORT cigarettes on the web site there will be confusion with the competing products also sold on the Respondent's site. The contents of the web site including images of the Complainant's product show actual knowledge on the part of the Respondent of the Complainant and its business. The Respondent has intentionally attempted to attract for commercial gain Internet users to its site attached to the Domain Name by creating a likelihood of confusion with the Complainant's trade marks as to the source, affiliation or endorsement of the web site.
The Respondent has been the subject of domain name proceedings where it was ordered to transfer domain names to another tobacco company. This record reflects a pattern of conduct on behalf of the Respondent in registering domain names in bad faith.
The Respondent also concealed its contact information which is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Identical and/or Confusingly Similar
The Complainant is a well-known provider of tobacco and is the owner of the NEWPORT and NEWPORT PLEASURE trade marks in the United States for cigarettes with first use in commerce recorded as 1956 and 1974 respectively.
The Domain Name includes both of the Complainant's registered marks NEWPORT and NEWPORT PLEASURE with the generic word "cigarettes" inserted between "Newport" and "pleasure" which corresponds with the product that the Complainant offers. The addition of this generic word does not serve to distinguish the Domain Name from the Complainant's NEWPORT PLEASURE mark especially bearing in mind that the Complainant offers cigarettes. The Domain Name is also confusingly similar to the Complainant's NEWPORT mark as the remaining words in the Domain Name may be thought to correspond with the generic words "cigarettes" and "pleasure" neither of which on their own distinguish the Domain Name from the Complainant's NEWPORT mark which is registered for cigarettes, associated by some that may find smoking agreeable with "pleasure". Accordingly, the Panel finds that the Domain Name is confusingly similar to marks in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
It is clear from the evidence that the Respondent has used the site attached to the Domain Name to promote goods in competition with those of the Complainant. It is clear from the content of the site that the Respondent was aware of the significance of the names "Newport" and "Newport Pleasure" for cigarettes at the time of registration and therefore must have been aware of the Complainant and its business at that time which would be indicated by the combination of "Newport" with "Pleasure" in any event. The usage is not fair as the site uses the Complainant's marks and does not make it clear that there is no commercial connection with the Complainant of the web site or of products not of the Complainant's manufacturer offered on the site. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods or services. The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant's name in relation to competing products and in the Domain Name for the web site. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant alleges that the Respondent's use of the site is commercial and it is being used to make profit from products which compete with the Complainant in a confusing manner. The content of the Respondent's web site makes it clear that the Respondent was aware of the Complainant's rights at the time of registration. It seems clear that the use of the Complainant's marks would cause people to associate the web site at the Domain Name and the products on it with the Complainant and its business and goods. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site or products offered on the Respondent's site.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. There is therefore, no necessity to consider the Complainant's further contentions regarding pattern of conduct and failure to provide contact information.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <newportcigarettespleasure.com>, be transferred to the Complainant.
Date: December 8, 2016