WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lorillard Technologies, Inc. v. Whoisguard, Inc. / Alykhan Virani

Case No. D2014-2074

1. The Parties

Complainant is Lorillard Technologies, Inc. of Greensboro, North Carolina, United States of America ("United States") represented by Dykema Gossett PLLC, United States.

Respondent is Whoisguard, Inc. of Panama / Alykhan Virani of North Vancouver, Canada.

2. The Domain Name and Registrar

The disputed domain name <blu-cigarette.com> (the "Disputed Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 28, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to Complaint. Complainant filed an amendment to the Complaint on December 1, 2014.

The Center verified that the Complaint together with the amendment to 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 December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2014

The Center appointed Isabel Davies as the sole panelist in this matter on January 5, 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.

On January 27, 2015 the parties were sent an Administrative Procedural Order. On January 29, 2015 Complainant's Reply and Submissions were submitted. Respondent did not reply.

4. Factual Background

Complainant's domain name was registered on December 3, 2008.

Complainant owns registered trademarks for BLU CIGS and BLU ECIGS (collectively referred to with the BLU trademark as "the BLU CIGS Marks") in many countries in the world dating from 2010.

Complainant owns and operates a website "www.blucigs.com" through which Complainant's brand of BLU ECIGS cigarettes and accessories are sold.

Complainant has now provided evidence in its Reply and Submissions to the Administrative Panel Procedural Order that their website was operative from April 22, 2009.

Complainant and its predecessor in title Blec LLC have been using continually used the trademark BLU since April 22, 2009.

The Disputed Domain Name was registered on June 16, 2009 eight weeks after the first use of which Claimant has now provided evidence.

5. Parties' Contentions

A. Complainant

The Disputed Domain Name is identical and/or confusingly similar to Complainant's trademarks

Complainant has now provided evidence of use of the trademark BLU from April 22, 2009 and contends that it had common law rights at the time of the registration of the Disputed Domain Name.

Complainant complains that the Disputed Domain Name <blu-cigarette.com> registered by Respondent is confusingly similar to Complainant's Blu Cigs Marks and is being misused without Complainant's permission. It states that the Disputed Domain Name is simply a combination of Complainant's well-known BLU mark in combination with the generic suffix "cigarette". Respondent has wholly incorporated the BLU mark in the Disputed Domain Name. Claimant states that it owns statutory and common law rights in the Blu Cigs Marks by virtue of its extensive use of these trademarks in the United States and by virtue of its registrations for these trademarks in the United States and other countries. The Disputed Domain Name is, it contends, a virtually identical copy of Complainant's trademark, and its domain name in the ".com" Top Level Domain.

It states that the addition of the generic word "cigarette" is irrelevant to a Policy 4(a)(i) determination. Given the identical nature of Complainant's mark and the Disputed Domain Name and the fact that the content on the home page for the site (which Panel is unable to access) is all about Complainant's electronic cigarettes, Complainant contends that its customers and the rest of the general public are likely to ‎believe that the Disputed Domain Name belongs to, is associated ‎with, endorsed by or is otherwise sponsored and approved by Complainant.

Respondent has no rights or legitimate interests in the Disputed Domain Name

Complainant contends that Respondent has no rights or legitimate interests in the Blu Cigs Marks or Disputed Domain Name because Respondent is in no way affiliated with Complainant. Complainant is the rightful owner of the mark BLU for electronic cigarettes and all of the Blu Cigs Marks. Complainant contends that, by registering the Disputed Domain Name, Respondent is trading off of the goodwill created by Complainant in its Blu Cigs Marks.

The Disputed Domain Name then resolves to a website that reproduces Complainant's marks and logos and appears authentic; however, Complainant states, it is deceptive in that when the user is prompted to try Complainant's BLU ECIGS or learn more about Complainant's products, they are redirected to a web site for Altrinsic Payday Loans. The "www.blu-cigarette.com" web site also seeks to collect names and email addresses, which Complainant contends is for nefarious marketing campaigns

At no time did Respondent ever seek or obtain a license from Complainant to use the Blu Cigs Marks. Nor has Respondent attempted to file any trademark applications for the mark BLU or BLU CIGARETTE in connection with any goods or services, as a legitimate trademark owner would do. Complainant states that, if Respondent had done so, such applications would clearly be objectionable since Complainant is the owner of the Blu Cigs Marks. Complainant avers that Respondent's complete lack of any registration and lack of an attempt to register such rights in BLU ECIGS demonstrates that Respondent in fact has no legitimate rights in these marks and the Disputed Domain Names.

Moreover, Complainant states, 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 web site whose sole purpose is to make the user think they are on Complainant's web site and then deceive them by either redirecting them to a web site for a third party loan company or collecting their personal information and email addresses. Respondent, it states, is not commonly known by the "Blu" or "Blu Cigarette" name and, it states, cannot possibly have any legitimate interest in the Disputed Domain Name.

In sum, it states, Respondent has no rights or legitimate interests in the Disputed Domain Name.

Respondent registered and is using the Disputed Domain Name in bad faith.

Complainant sets out the Policy which sets forth four non-exclusive and non-exhaustive factors that the Panel may examine to determine whether Respondent has registered or used the Disputed Domain Name in bad faith. These are whether:

(i) the Disputed Domain Name was registered primarily for the purpose of selling it to Complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or

(ii) the Disputed Domain Name was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or

(iii) the Disputed Domain Name was registered primarily to disrupt the business of a competitor; or

(iv) by using the Disputed Domain Name, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. Paragraph 4(b) of the Policy.

Complainant states that it need not show bad faith under all four of these factors, but need only show bad faith as to one. Complainant contends that Respondent's bad faith is established under the fourth factor. It states that Respondent's intentional use of Complainant's Mark to mislead and divert customers away from Complainant's legitimate business to the website found at "www.blu-cigarette.com" in order to redirect customers to the web site of a third party loan company amounts to use of the Disputed Domain Name in bad faith. Complainant avers that Internet users are likely to be confused by the similar domain name and attracted to the linked website while they are looking to purchase "blu eCigs" electronic cigarettes. 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.

Furthermore, Complainant states, courts have recognized that using another's trademark in order 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. Here, Complainant contends Respondent registered the Disputed Domain Name in a manner calculated to improperly trade on the goodwill of the Blu Cigs Marks and that such use constitutes trademark infringement in bad faith.

Complainant contends that the only reason Respondent registered the Disputed Domain Name was because the name contained Complainant's BLU trademark. Under these circumstances, it contends that the Respondent must have had actual knowledge of Complainant's rights in its Blu Cigs Marks when Respondent registered the Disputed Domain Name because the trademark was so widely known.

In response to the Administrative Panel Procedural Order Complainant has now provided evidence of significant press coverage for references to BLU electronic cigarettes including internet reviews published between May 1, 2009 and June 16, 2009. Complainant states that, in light of this it is implausible that Respondent's knowledge of Complainant's BLU trademark was lacking when the Disputed Domain name was registered on June 16, 2009 not least because Respondent copied Complainant's website in its entirety.

Complainant therefore states that the circumstantial evidence of Respondent's knowledge of Complainant's rights and use of the BLU trademark and its desire to create an association with Complainant is overwhelming.

Complainant therefore contends that Respondent's activities constitute bad faith under the Policy.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under, the Rules, including Respondent's failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name.

The Disputed Domain Name is identical and/or confusingly similar to Complainant's trademarks.

In response to the Administrative Panel Procedural Order Complainant has provided evidence of use of the trade mark BLU from April 22, 2009 and contends that common law rights existed at the time of the registration of the Disputed Domain Name.

The Panel accepts that the Disputed Domain Name is a combination of Complainant's BLU, BLU CIGS and BLU ECIGS trademarks in combination with part of the generic suffix "cigarette" and with the omission of an "s".

The Panel accepts that the addition of part of a descriptive term cigarette is not sufficient to avoid confusion with an existing trademark. The addition of the generic word "cigarette" is irrelevant to a Policy paragraph 4(a)(i) determination. See Orbis Holdings Limited v. Lu A Feng and Orbis Search, WIPO Case No. D2007-0515; see also Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, holding "the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark."

Given the inclusion of the majority of Complainant's trademark BLU CIGS with the addition of part of a descriptive word the Panel finds that that the Disputed Domain Name is confusingly similar to Complainant's trademarks.

Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Panel accepts that Respondent is in no way affiliated with Complainant which is proprietor of registered trademarks for BLU ECIGS and BLU CIGS in various countries and has common law rights in BLU arising from its first evidenced use on April 22, 2009 and claimed first use of Complainant's registered trademarks of May 1, 2009.

The Panel accepts that Complainant's common law rights in its related trademarks preceded respondent's registration of the Disputed Domain Name.

The Panel accepts that Disputed Domain Name resolves to a domain name that reproduces Complainant's marks and logos and appears authentic but that it is deceptive in that when the user is prompted to try Complainant's blue eCigs or learn more about Complainant's products, they are redirected to a web site for Altrinsic Payday Loans.

The Panel accepts that there is no demonstrable use by Respondent of the Disputed Domain Name in connection with a bona fide offering of goods or services and that the Disputed Domain Name resolves to a web site whose sole purpose is to make the user think they are on Complainant's web site and then deceive them by either redirecting them to a web site for a third party loan company or collecting their personal information and email addresses.

The Panel accepts that Respondent is not commonly known by the "BLU" or "BLU CIGARETTE" name.

See United Parcel Service of America, Inc. v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2013-1555 (holding that lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant's rights in its related trademarks preceded respondent's registration of the disputed domain name; and (3) respondent is not commonly known by the domain name in question).

The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Respondent registered and is using the Disputed Domain Name in bad faith.

The Policy sets forth four non-exclusive and non-exhaustive factors that the Panel may examine to determine the Respondent has registered or used a domain name in bad faith. These are whether:

(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or

(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or

(iii) the domain was registered primarily to disrupt the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. Paragraph 4(b) of the Policy.

A complainant need not show bad faith under all four of these factors, but need only show bad faith as to one.

Complainant contends that the Complaint satisfies the fourth factor. Complainant states that Respondent's intentional use of Complainant's mark to mislead and divert customers away from Complainant's legitimate business to "www.blu-cigarette.com" in order to redirect customers to the web site of a third party loan company amounts to use of the Disputed Domain Name in bad faith. Internet users are likely to be confused by the similar domain name and attracted to the linked website while they are looking to purchase BLU CIGS electronic cigarettes. 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 paragraph 4(b)(iv) of the Policy.

Following the Administrative Panel Procedural Order Complainant has now provided evidence of its rights arising from use in a functioning website for blu eCigs commencing on April 22, 2009, eight weeks before the registration of the Disputed Domain Name and of the press coverage which the launch of blue eCigs received.

Complainant takes issue with the Panel's reference to the unevidenced commencement of use stated in the Complaint to be May 1, 2009 being a "matter of weeks" before the registration of the Disputed Domain Name and states that the eight weeks from April 22, 2009 referred in the response to the Administrative Panel Procedural Order proves that the use was a "matter of months". The Panel takes the view that, taking account of the extra eight days now claimed by Complainant, this period remains a matter of weeks rather than a matter of months.

Complainant asserts that, because Respondent's use is of a website which wholesale copies Complainant's website and is using the Disputed Domain Name and the associated website for nefarious purposes, this constitutes registration and use in bad faith.

The Panel accepts that the Complaint demonstrates use in bad faith.

However the issue is whether registration in bad faith has been demonstrated.

In the light of the evidence now provided by Complainant as to the use from April 22, 2009 and the evidence of the coverage of the launch of the blu eCigs business the Panel accepts that Respondent must have known of Complainant's business when registering the Disputed Domain Name.

Accordingly the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith.

7. Decision

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 <blu-cigarette.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: February 4, 2015