WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lorillard Tobacco Company, Lorillard Licensing Company LLC v. Bao Shui Chen

Case No. D2009-0743

1. The Parties

The Complainants are Lorillard Tobacco Company, Greensboro, United States of America; and Lorillard Licensing Company LLC, Greensboro, United States of America, represented by DLA Piper US LLP, United States of America.

The Respondent is Bao Shui Chen, Shanghai, People's Republic of China.

2. The Domain Name and Registrar

The disputed domain name <lorilard.com> is registered with Nettuner Corp. DBA Webmasters.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2009. On June 8, 2009, the Center transmitted by email to Nettuner Corp. DBA Webmasters.com a request for registrar verification in connection with the disputed domain name. On June 16, 2009, Nettuner Corp. DBA Webmasters.com 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2009.

The Center appointed Adam Samuel as the sole panelist in this matter on July 15, 2009. 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 first and second Complainants are closely related companies, both part of the Lorillard Inc group. This manufactures and sells cigarettes in the United States of America. The second Complainant owns a United States of America trademark for the name LORILLARD, number 0707998, dated December 6, 1960. The first Complainant owns a United States of America trademark for the same name, number 1920066, dated September 19, 1995. The two companies also own trademarks for the same name in a number of other countries. The disputed domain name was created on September 26, 2008.

5. Parties' Contentions

A. Complainant

What follows are the Complainant's contentions with which the Panel may or may not agree.

The Complainants have obtained two U.S. trademark registrations on the Principal Register of the United States Patent and Trademark Office for LORILLARD in plain text and LORILLARD in stylized text. In addition to these U.S. registrations, the Complainants have also obtained several trademark registrations including the word LORILLARD around the world, including a registration in the country of the Respondent's contact address, China.

The Complainants' group owns both <lorillard.com> and <lorillard.net> where it hosts an identical website.

The disputed domain name is confusingly similar to Lorillard's name, to the LORILLARD Marks and to the Complainants' official websites: “www.lorillard.com” and “www.lorillard.net”. In fact, the domain name is nothing more than a common misspelling of the famous LORILLARD marks which omits one “l” and does not change the pronunciation of the word. This is a clear case of typo-squatting. The domain name is confusingly similar and almost identical to Lorillard's registered LORILLARD marks because it is merely a misspelling of the LORILLARD Marks.

Any use of the domain name by the Respondent will cause confusion among Internet users who will mistakenly assume an association between the domain name and the Complainants. In fact, Internet users are likely to type in the domain name in search of the Complainants' authorized website, and Internet users may reasonable assume that the “lorilard.com” website is, in fact, sponsored by or affiliated with the Complainants.

The Respondent has no legitimate interest in the disputed domain name in view of the Complainants' prior rights in the LORILLARD Marks. These rights were established long prior to the Respondent's registration of the domain name. The Respondent was familiar with the famous LORILLARD Marks at the time of registration of the domain name.

The Respondent is not and has never been commonly known by the disputed domain name, and has never been a licensee of either of the Complainants or otherwise authorized by them to use the domain name or any of the LORILLARD Marks.

The Respondent is not making a bona fide offering of goods or services from its website. The website only appears to provide links under a broad subject heading, which then redirects to another page with sponsored listings relating to that subject. Some of the links lead Internet users to goods which compete with Lorillard's goods. Some of the links appear to lead to authorized Lorillard websites. However, they do not instead leading again to sponsored links for competing companies.

The Respondent is a serial cybersquatter who targets famous companies and incorporates their trademarks in a domain name that directs Internet users to websites which promote or have links to other websites that often compete with the business of the famous companies.

The Respondent registered, uses and continues to use the disputed domain name to redirect Internet users away from authorized Lorillard websites and to the “www.lorilard.com” website where Internet users will find sponsored links that lead to competing goods. The Respondent probably receives pay-per-click revenue from clicks resulting from this confusion. Intentionally leading Internet users to a website which offers cigarettes which compete with Lorillard's own products even after receiving several cease and desist letters from Lorillard constitutes bad faith conduct.

Despite the requests from the Complainants to cease and desist in the registration and infringing use of the domain name, the Respondent has persisted with its efforts to profit from the fruits of Lorillard's labours.

The Complainants request the Panel order the transfer of the disputed domain name from the Respondent to the second Complainant.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

Both Complainants own trademark registrations in the United States of America for the name LORILLARD. The disputed domain name reproduces the Complainants' trademark with the omission of the letter ‘l'. The word ‘lorilard' has no independent meaning except as a misspelling of the Complainants' trademark.

This appears to be a classic example of “typo-squatting”, where a domain name attracts Internet users who make a small typing error. The domain name without the generic ‘.com' both sounds and looks almost identical to the Complainants' trademark.

In Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,WIPO Case No. D2006-0020, the Panel said on this subject:

“Here, the domain name has two differences from Registration No. 2152729 and the key element of the other two registrations: the addition of the .com suffix and the substitution of “i” for the first “a” in the trademark.

The substitution of the “i” for the first “a” is visually apparent on close inspection. The domain name and the trademark, MIRAVAL, however, are phonetically similar. There are various ways that both versions of the word may be pronounced and some of these will or may sound the same or similar. The word element of the domain name created by the substitution of the “i” for the “a” is not a plain English word or otherwise generic. There are likely to be circumstances where a person might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to “guess” at domain names. In these circumstances a finding of confusing similarity in line with the “typosquatting” cases is appropriate. See e.g. AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

Consequently, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant's registered trademark rights.”

For essentially the same reasons, the Panel concludes here that the domain name is confusingly similar to both the Complainants' registered trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Lorilard” or anything similar and does not appear to trade under that or any related name. There is no evidence that either Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name or replied to the Complainants' correspondence on the subject. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The name, “Lorilard”, has no apparent independent existence or meaning except as a misspelling of the Complainant's trademark. This was registered before the domain name in issue was registered. It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the domain name in issue other than to attract business or Internet users to its site who were looking for a site connected to the Complainant's trademark or business.

The only explanation of what has happened seems to be that the Respondent's motive in registering and using the sites is, as the Complainant says, simply to disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the domain name from him for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii) and (iii) of the Policy.

This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent's website by creating a likelihood of confusion with the complainant's mark as to the source” of the website. Here such conduct was undertaken to send Complainant's customers to a site that promoted directly competing services.”

For all these reasons, the Panel concludes that the domain name was registered and is being used in bad faith.

The domain name currently resolves to a standard parking page. The evidence filed by the Complainant shows that it used to resolve to pages which ultimately promoted the Complainants' competitors' products. The Respondent also appears to have a history of being found to have registered domain names in bad faith in other WIPO UDRP cases. These points would be further reasons for a finding of bad faith if they were necessary.

7. Decision

The Complaint requests the transfer of the disputed domain name to the second Complainant. Since the second Complainant has been able to prove all the elements required by the Policy, it is entitled to that remedy.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lorilard.com> be transferred to the second Complainant.

Adam Samuel
Sole Panelist

Dated: July 16, 2009