Cheapnewportcigarettes.com, Newports-cigarettes.com

The timeline behind cheapnewportcigarettes.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Lorillard Licensing Company, LLC v. li kenny / kenny also known as jianning huang / kenny Claim Number: FA1207001453563 PARTIES Complainant is Lorillard Licensing Company, LLC (“Complainant”), represented by Christina D. Yates of DLA Piper US LLP, California, USA. Respondent is li kenny / kenny (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <cheapnewportcigarettes.com> and <newports-cigarettes.com>, registered with HiChina Zhicheng Technology Ltd. PANEL 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. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2012; the National Arbitration Forum received payment on July 16, 2012. The Complaint was submitted in both English and Chinese. On July 17, 2012, HiChina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names are registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology Ltd. 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 27, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 16, 2012 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@cheapnewportcigarettes.com and postmaster@newports-cigarettes.com. Also on July 27, 2012, 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. 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, determines that the remainder of the proceedings may be conducted in English. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant a) The same entity controls both of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names, which means there is only one Respondent in this case. b) Complainant has rights in the NEWPORT mark, used in connection with cigarettes. c) Complainant is the owner of United States Patent and Trademark Office (“USPTO”) trademark registrations for the NEWPORT mark (e.g., Reg. No. 871,160 registered June 17, 1969). d) Respondent registered the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names on September 30, 2010. e) The <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names are confusingly similar to the NEWPORT mark. f) Respondent does not have, and has never sought, a license from Complainant to use the NEWPORT mark. g) The <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names resolves to websites where Respondent operates unauthorized online stores where Internet users can buy products identical to Complainant’s. h) Respondent registered the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names in order to confuse Internet users by improperly trading on the goodwill of the NEWPORT mark. i) Respondent registered the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names with knowledge of Complainant’s rights in the NEWPORT mark. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant holds registered trademarks for the NEWPORT mark. Respondent did not submit a Response in this proceeding DISCUSSION 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.”). Preliminary Issue: Multiple Respondents In the instant proceeding, Complainant has alleged that the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the following factors indicate that Respondent is using aliases to register and operate both domain names: 1) The WHOIS information for both disputed domain names lists an identical registrant e-mail address; 2) The physical addresses listed for the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names are incorrect and incomplete, but both are in the same province in China; 3) “Li Kelly” is listed as the registrant, administrative name, billing name, and technical name for the <cheapnewportcigarettes.com> domain name and is listed as administrative name, billing name, and technical name for the <newports-cigarettes.com> domain name in the WHOIS records; 4) The disputed domain names were both created on September 30, 2010; 5) Both of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names use the same Internet service provider, Webexxpurts, whose information is shielded by RIPE Network Coordination Centre; 6) Both of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names have the same registrar, Hichina Zhicheng Technology Ltd; 7) Both of the disputed domain names use the NEWPORT mark; 8) Both of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names have the same use. The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding. Preliminary Issue: Language of the Proceedings The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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, determines that the remainder of the proceedings may be conducted in English. Identical and/or Confusingly Similar Complainant asserts that it has rights in the NEWPORT mark. Complainant states that it uses the mark in connection with cigarettes. Complainant provides the Panel with evidence that Complainant is the owner of USPTO trademark registrations for the NEWPORT mark (e.g., Reg. No. 871,160 registered June 17, 1969). The panel in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), held that the registration of a mark with a federal trademark authority is evidence of having rights in a mark. The panel in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), held that rights in a mark satisfy Policy ¶ 4(a)(i) regardless of the location of the parties. Therefore, the Panel finds that Complainant has rights in the NEWPORT mark under Policy ¶ 4(a)(i). Complainant contends that the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names are confusingly similar to the NEWPORT mark. The addition of generic and/or descriptive terms does not remove a disputed domain name from the realm of confusing similarity. 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)). Moreover, additions such as a hyphen and/or a generic top-level domain (“gTLD”), are irrelevant to a Policy ¶ 4(a)(i) determination. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names are confusingly similar to Complainant’s NEWPORT mark under Policy ¶ 4(a)(i). The Panel finds Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case. Complainant asserts that Respondent does not have rights or legitimate interests in the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names. Complainant contends that Respondent does not have, and has never sought, a license from Complainant to use the NEWPORT mark. Additionally, the Panel notes that the WHOIS record for the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names lists “jianning huang / kenny” and “li kenny / kenny,” respectively. The information available in the record, including the WHOIS record, is evidence of whether or not a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent’s use of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names is further evidence of a lack of rights and legitimate interests. Complainant alleges that the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names resolve to websites where Respondent operates unauthorized online stores where Internet users can purchase products identical to those that Complainant offers. In Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003), the Panel found that using a disputed domain name to sell products identical to Complainant’s products does not give the respondent rights or legitimate interests. Therefore, the Panel find thats Respondent’s use of the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant contends that Respondent registered and is using the disputed domain names in bad faith. Complainant asserts that Respondent registered the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names in order to confuse Internet users into visiting the resolving websites by improperly trading on the goodwill of the NEWPORT mark. Complainant asserts that the disputed domain names resolve to websites where Respondent operates an unauthorized online store selling products identical to those that Complainant offers. Complainant asserts that Respondent registered and is using the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names to take commercial advantage of Internet users. Therefore, the Panel finds that Respondent registered and is using the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). Complainant finally asserts that Respondent registered the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names with actual knowledge of Complainant’s rights in the NEWPORT mark. Complainant asserts that its trademark registrations of the NEWPORT mark gave Respondent knowledge of Complainant’s rights. Panels have found that actual knowledge is sufficient to demonstrate bad faith. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the NEWPORT mark when Respondent registered the disputed domain names, and therefore the Panel finds that Respondent registered and uses the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names in bad faith under Policy ¶ 4(a)(iii). The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <cheapnewportcigarettes.com> and <newports-cigarettes.com> domain names be TRANSFERRED from Respondent to Complainant. Bruce E. Meyerson, Panelist Dated: August 30, 2012 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.