WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lorillard Licensing Company, LLC v. Yang Xve
Case No. D2017-0851
1. The Parties
The Complainant is Lorillard Licensing Company, LLC of Winston-Salem, North Carolina, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America ("United States").
The Respondent is Yang Xve of Xiamen, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <newportonlinesale.com>, <newportwebshop.com>, <newport100.com>, <wholesalenewportcigs.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2017.
Subsequently, the Center noticed that while it had successfully delivered the Notification of Complaint to the Respondent by various means, by an oversight the Notification of Complaint had not been copied to all the email addresses shown on the webpages at the disputed domain names. Accordingly, on June 1, 2017, the Center sent an email communication to the Respondent giving the Respondent until June 6, 2017 to indicate whether it wished to participate in the proceedings. The Respondent did not reply.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 22, 2017. 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 result of the merger of Lorillard Tobacco Company with R.J. Reynolds Tobacco Company, the United States' first tobacco company, founded in 1760. The Complainant's parent company, R.J. Reynolds Tobacco Company, is currently the second-largest tobacco company in the United States and its brands include NEWPORT, CAMEL and PALL MALL.
For decades, the Complainant and its predecessors have used the trademark NEWPORT in connection with the sale of tobacco products.
The Complainant owns a number of registrations for the NEWPORT mark with the United States Patent and Trademark Office ("USPTO"), including trademark registration no. 1,191,816 registered on March 9, 1982.
The Complainant, through the corporate parent company R.J. Reynolds Tobacco Company, also owns the domain names <newport-pleasure.com> and <newportcigarettes.com>, respectively registered on March 14, 2003 and on November 12, 2001.
The Respondent registered the disputed domain names <newportonlinesale.com>, <wholesalenewportcigs.com>, <newportwebshop.com> and <newport100.com> on April 11, 2016; April 8, 2016; March 27, 2016; and April 14, 2016, respectively.
The Panel accessed the disputed domain names on July 5, 2017, when they were all linked to webpages offering cigarettes for sale, including Newport cigarettes and competing products, such as Marlboro cigarettes.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) The disputed domain names are identical or confusingly similar to the Complainant's well-known NEWPORT marks, as they incorporate the exact NEWPORT trademark in its entirety. The generic terms "online sale," "wholesale," "cigs" (short for "cigarettes"), "webshop" and "100" do not distinguish the disputed domain names from the Complainant's NEWPORT Marks. Such terms actually exacerbate confusion because they give the impression that the sites located at the disputed domain names are legitimate online marketplaces for Newport cigarettes and suggest to Internet users that the disputed domain names are related to or endorsed by the Complainant. NEWPORT is a distinctive trademark when used with cigarettes and has been used for decades by the Complainant, its predecessors and their authorized affiliates. Because NEWPORT is a famous mark in connection with tobacco products, it is not feasible to believe that the disputed domain names mean anything other than the Complainant's and its affiliates' mark, particularly given that the disputed domain names are being used to lead to websites offering NEWPORT cigarettes, as well as competing cigarettes.
(ii) The Respondent has no legitimate interests in the disputed domain names. Since the Complainant's adoption and extensive use of the NEWPORT marks long predate the Respondent's first use of any of the disputed domain names, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain names. When, however a complainant's marks are so well-known and recognized, such as the NEWPORT marks, there can be no rights or legitimate use by the respondent. The disputed domain names are not, nor could they be contended to be, legitimate names or nicknames of the Respondent, nor are they in any other way identified with or related to any rights or legitimate interests of the Respondent. The Respondent is not known by the name Newport or any variation thereof. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the exact NEWPORT mark in connection with cigarettes or any other tobacco or tobacco-related products. The Complainant has not sponsored or endorsed the Respondent's activities or websites, and has not provided any consent to the Respondent's use and exploitation of the NEWPORT mark in the disputed domain names. The Respondent is not an authorized franchisee or distributor of the Complainant's products and, upon information and belief, there has never been any business relationship between the Complainant and the Respondent. The Respondent is using the disputed domain names, without permission or authorization from the Complainant, to attract Internet users and direct them to websites that promote and sell competing cigarette products. Such use is likely to confuse Internet users into believing that the websites to which the disputed domain names lead are affiliated with or somehow connected to the Complainant's products, which is not the case. While the Respondent may be selling actual Newport products (although this has not yet been verified, and the products may be counterfeit or grey market goods), neither the Complainant nor its affiliates has authorized the Respondent's use of the NEWPORT marks, including use in domain names to identify websites and draw Internet consumers to websites. Thus, even if the Respondent is offering actual Newport products for sale, the Respondent has no rights or legitimate interests in the disputed domain names and cannot be said to be using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. The Respondent's use of the disputed domain names to promote sales constitutes trademark infringement and unfair competition, and is not a legitimate interest or use. The Respondent's use of the NEWPORT mark in the disputed domain names is clearly commercial, is for the financial benefit of the Respondent, is without authorization from the Complainant or its affiliates, and is with the intent to divert consumers to the disputed domain names websites which offer competing products for sale. Internet users searching for information about the Complainant or Newport products will be misled by the disputed domain names. Previous Panels have found that such trademark use leads to initial interest confusion. The Respondent could only have registered a domain name beginning with the Complainant's and its affiliate's exact mark if the Respondent knew of the NEWPORT mark and intended to capitalize on the hard-earned and valuable goodwill associated with it, and the content of the Respondent's websites proves that the Respondent knew of the Newport brand of cigarettes.
(iii) The Respondent acquired and is using the disputed domain names in bad faith. The Respondent has registered and is using the disputed domain names in bad faith for commercial gain and to benefit from the goodwill and notoriety associated with the Complainant's NEWPORT marks. Here, the Respondent's bad faith registration of the disputed domain names is established by the fact that each of the disputed domain names completely incorporates the Complainant's exact, well-known NEWPORT mark. The Respondent's bad faith is also exhibited by the fact the Respondent registered the disputed domain names many years after the Complainant's NEWPORT mark became well-known. Given that the sites to which the disputed domain names resolve prominently feature and show images of Newport products (in addition to competing Marlboro-branded cigarettes) there can be no doubt that the Respondent was fully aware of the Complainant's rights in its NEWPORT marks when the Respondent registered the disputed domain names and did so in order to intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names. Such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, but an act of bad faith. The Respondent's bad faith registration and use of the disputed domain names are further evidenced by the fact that, as noted above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites linked to the disputed domain names by creating a likelihood of confusion with the Complainant's NEWPORT mark as to the source, sponsorship, affiliation, or endorsement of those four websites. The Respondent's bad faith registration and use are also established by the Respondent's registration and use of multiple domain names based on the NEWPORT mark owned by the Complainant and its affiliates.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "newport" is a term directly connected with the Complainant's cigarettes.
Exhibit J to the Complaint shows several registrations for NEWPORT trademarks owned by the Complainant in the United States.
Outside the United States, the Newport brand is owned and managed by British American Tobacco (Brands) Inc. and its affiliates, which has expressly consented to the Complainant's filing of this Complaint regarding the disputed domain names, asserting and including its rights – Exhibits G and H to the Complaint.
The trademark NEWPORT is wholly encompassed within the disputed domain name.
The disputed domain names differ from the Complainant's trademark basically by the addition of the terms "online sale," "wholesale", "cigs", "webshop" and "100", as well as of the generic Top-Level Domain ("gTLD") ".com".
Previous UDRP decisions have found that descriptive additions (such as "online sale," "wholesale", "cigs" - short for "cigarettes" -, "webshop" and "100") do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000 0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also already well established that the addition of a gTLD extension such as ".com" is irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
The present case raises the question of whether an unofficial reseller of trademarked products may use the trademark at issue to compose its domain names. According to previous UDRP decisions (mainly Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), a bona fide offering of goods or services in such contexts shall meet several requirements, including:
- The respondent must actually be offering the goods or services at issue (World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306);
- The respondent shall use the website to sell only the trademarked goods; otherwise, it would be using the trademark to bait Internet users and then switch them to other goods (Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774);
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000 1525); and
- The website must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents (Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001 0211; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344).
In the present case, even if the Respondent is offering for sale Newport cigarettes, the other requirements are not met. There are competing products – such as Marlboro cigarettes – being offered for sale on the website at the disputed domain names; the Respondent has tried to corner the market in at least four different uses of the Complainant's trademark; and the Respondent's websites do not accurately disclose its relationship with the Complainant.
Therefore, the use of the Complainant's trademark in the context of the disputed domain names cannot qualify as a bona fide offering of services.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Finally, paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the 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 domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain names were registered by the Respondent (in 2016) the trademark NEWPORT was already directly connected to the Complainant's products.
The disputed domain name encompasses the trademark NEWPORT together with generic terms that are related to the Complainant's main product (cigarettes).
The websites linked to the disputed domain names reproduce the NEWPORT brand and logo, offering the Complainant's cigarettes and also competing products for sale.
Therefore, the Panel concludes that it is not feasible that the Respondent was not aware of the Complainant's trademark when he registered the disputed domain names, and that the adoption of the expressions "newportonlinesale", "newportwebshop", "newport100" and "wholesalenewportcigs" were mere coincidences.
Actually, the Panel is convinced that the registration and use of the Complainant's trademark NEWPORT together with generic and descriptive terms such as "online sale," "wholesale", "cigs", "webshop" and "100" indicate that the Respondent intentionally attempted to attract Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites, for commercial gain.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain names were registered and are being used in bad faith, satisfying the third element of the Policy.
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 names, <newportonlinesale.com>, <newportwebshop.com>, <newport100.com> and <wholesalenewportcigs.com> be transferred to the Complainant.
Date: July 6, 2017