WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.

Case No. D2016-0344

1. The Parties

The Complainant is Fontem Holdings 4, B.V. of Amsterdam, the Netherlands, represented by Dykema Gossett PLLC, United States of America.

The Respondent is J- B-, Limestar Inc of Parkland, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blucigarettes.org> (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 February 19, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 22, 2016, 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 February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2016.

The Center appointed David Taylor as the sole panelist in this matter on March 24, 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.

On April 15, 2016, the Panel issued an Administrative Panel Procedural Order reproduced as follows:

"The Panel has examined the evidence submitted by the Complainant attached at Appendix B and has noted that it merely consists of a list of trademark registrations, without any supporting evidence, such as the corresponding registration certificates or extracts from the online database of the corresponding intellectual property office. The evidence does not list the owner of the trademarks nor their registration dates.

The Panel has therefore consulted a sample of these trademark registrations, including U.S., Australian and international trademark registrations, on the online databases of the corresponding intellectual property offices and has noted that the listed owner of such trademark registrations is 'Lorillard Technologies, Inc' and not the Complainant. Furthermore, in its Complaint, the Complainant has merely asserted, without any supporting evidence, that Lorillard Technologies, Inc. is one of the Complainant's 'predecessor companies'.

Given that the Complainant does not appear as the listed trademark owner of the trademark registrations upon which the Complainant seeks to rely (which is a requirement under paragraph 4(a)(i) of the Policy) and, furthermore, the Complainant has not adequately explained nor provided any evidence to demonstrate its relationship with the listed trademark owner that would justify an inference that it has "rights" for the purposes of the Policy (as explained in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition),

IT IS HEREBY ORDERED, pursuant to paragraphs 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, that the Complainant provide an additional submission whereby it explains and submits evidence to demonstrate the nature of its relationship with the listed trademark owner of the trademarks upon which it seeks to rely".

On April 19, 2016, the Complainant provided the requested evidence, namely evidence of an Assignment between the Complainant and the listed owner of the trademarks, Lorillard Technologies, Inc, and also a more detailed chart of the global trademark portfolio for the BLU CIGS marks, wherein the Complainant is identified as the owner of many of the registrations. The Complainant explained that "As noted above, the assignment was executed on June 12, 2015, and is still in the process of being recorded against the registrations shown in the name of Lorillard Technologies, Inc. The Assignment has already been recorded against many of the registrations, while applications to record the Assignment against others are in process".

The Panel gave the Respondent an opportunity to file a submission specifically concerning the Complainant's additional submission. The Respondent, however, did not file a submission.

4. Factual Background

The Complainant is the owner of a number of trademarks for the terms BLU, BLU CIGS, BLU ECIGS and BLU & Design ("BLU trademarks"), in connection with electronic cigarettes containing tobacco substitutes, including but not limited to:

- U.S. Trademark No. 3846035, BLU ECIGS, registered on September 7, 2010 (first used on May 1, 2009)(class 34);

- U.S. Trademark No. 4750243, BLU CIGS, registered on June 9, 2015 (first used on May 1, 2009) (class 34); and

- U.S. Trademark No. 4750245, BLU, registered on June 9, 2015 (first used on May 1, 2009)(class 34).

The Domain Name was registered on January 28, 2012. It resolves to a registrar parking page containing sponsored links for a variety of goods and services, including links in connection with smoking.

The Respondent appears to be a company based in Florida. No further details about the Respondent are known.

5. Parties' Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to the Complainant's BLU trademarks. The Complainant argues that the Domain Name wholly incorporates the BLU mark combined with the generic term "cigarettes" and that the addition of such term is irrelevant. The Complainant submits that the Domain Name is therefore likely to cause confusion amongst the Complainant's customers and the rest of the general public.

The Complainant further asserts that the Respondent does not have any rights or legitimate interests in the Domain Name. ‎The Complainant states that the Respondent is in no way affiliated with the Complainant, the rightful owner of the BLU trademarks, and that the Respondent is simply trading off of the Complainant's goodwill. The Complainant further argues that the Respondent is not licensed nor authorised by the Complainant to use its trademarks and nor has the Respondent attempted to file any trademark applications for the term BLU in connection with any goods or services. The Complainant also argues that the Respondent has not made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant asserts that there is no evidence to indicate that the Respondent has any rights or legitimate interests in the Domain Name other than that it registered it and is using it for the purpose of trading off the Complainant's well known trademarks for commercial gain by redirecting traffic to a web site featuring advertisements of the Complainant's competitor South Beach Smoke. Lastly, the Complainant asserts that the Respondent is not commonly known by the "BLU" name.

The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith. The Complainant argues that the Respondent intentionally registered the Domain Name to mislead and divert customers away from the Complainant's legitimate business and that such use is clearly in bad faith. The Complainant argues that Internet users are likely to be confused by the Domain Name particularly as the Complainant's BLU trademark and the generic word "cigarettes" have been paired together. The Complainant submits that the Respondent's use of the Domain Name to resolve to a website containing "pay-per-click" links to the Complainant's competitors, including an advertisement for South Beach Smoke, demonstrates that the Respondent's motive is nothing other than a blatant attempt to trade on the Complainant's rights in the BLU trademark and attract users looking for the Complainant for the Respondent's own commercial gain. The Complainant asserts that there can be no doubt that the Respondent registered the Domain Name with the bad faith intent of diverting Internet users searching for the Complainant's authentic BLU products and services.

The Complainant also argues that the Respondent registered the Domain Name for the purpose of preventing the Complainant from using the Domain Name in connection with the offering of goods and services associated with its BLU products and that such action constitutes bad faith under paragraph 4(b)(ii) of the Policy.

Finally, the Complainant argues that the use of another's trademark 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 and cites several court decisions involving initial interest confusion, for instance, Brookfield Communications, Inc. v. West Coast Erum't Corp., 174 F.3d at 1062 ("Although there is no source confusion in the sense that consumers know they are patronizing [the junior user] rather than [the senior user], there is nevertheless initial interest confusion in the sense that, by using [the senior user's mark] to divert people looking for [the senior user's goods] to its web site, [the junior user] improperly benefits from the goodwill that [the senior user] developed in its mark.") and Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th Cir. 2004) (declaring initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and constitutes actionable trademark infringement). The Complainant contends that the Respondent registered the Domain Name in a manner calculated to improperly trade on the goodwill of the Complainant's trademarks and that such use constitutes trademark infringement in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant's contentions. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trademark rights. The Complainant has provided evidence that it has registered trademark rights in the term BLU in connection with electronic cigarettes (as listed above). The Panel is therefore satisfied that the Complainant has established relevant trademark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Domain Name incorporates the Complainant's BLU trademark in its entirety with the addition of the generic term "cigarettes". Prior panels deciding under the Policy have held that "when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy." See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The addition of the term "cigarettes" does not diminish the confusing similarity with the Complainant's trademarks but rather reinforces it as it is a term that is descriptive of the goods and services for which the Complainant's trademarks have been registered.

The ".org" Top-Level Domain is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's BLU trademark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue."

Paragraph 2.1 of the WIPO Overview 2.0 provides as follows: "While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."

The Complainant has asserted that the Respondent is not affiliated in any way with the Complainant and it has not authorised the Respondent to make any use of its BLU trademarks. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent's use of the Domain Name for a parking page displaying sponsored links for a variety of goods and services, including for goods and services for which the Complainant's trademarks have been registered, cannot constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, as the Respondent is unduly profiting from the trademark value attached to the Complainant's trademarks. Indeed, prior panels deciding under the Policy have held that pay-per-click ("PPC") parking pages built around a trademark (as opposed to PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598. See also paragraph 2.6 of the WIPO Overview 2.0.

The Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

The Complainant has established that its BLU trademarks have been used in commerce in connection with electronic cigarettes since 2009, prior to the registration date of the Domain Name. Furthermore, the Domain Name consists of the Complainant's BLU trademark in conjunction with the term "cigarettes" which is a term that is precisely descriptive of the goods and services for which the Complainant's trademarks have been registered. Given this, the Panel is of the view that the Respondent deliberately registered the Domain Name with prior knowledge of the Complainant's trademark rights with the aim of taking advantage of such rights and as such in bad faith.

The Panel further finds that the Respondent's use of the Domain Name to resolve to a parking page containing sponsored links constitutes bad faith as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy. See Ustream.TV, Inc. v. Vertical Axis, Inc., supra. ("The Respondent's use of the disputed domain name for a PPC parking page constitutes bad faith use because the Respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with, the Complainant or its services. This conduct disrupts the Complainant's business by diverting consumers away from the Complainant's website. The diversion is for the Respondent's commercial gain because the Respondent receives PPC revenue from those visitors to its website who click through to the advertising on the site. Thus, the Respondent's conduct constitutes classic bad faith registration and use under paragraph 4(b)(iv) of the Policy (Mobile Communication Service Inc v. Webreg, RN, WIPO Case No. D2005-1304; Royal Bank of Canada v. Chan; Fox News v. Reid; TT-Line Company Pty v. Vertical Axis, Inc., WIPO Case No. D2007-1742)").

Finally, the Panel draws an adverse inference from the Respondent's failure to take part in the present proceedings.

The Panel therefore finds that the Domain Name was registered and is being used in bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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 Domain Name, <blucigarettes.org>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: May 10, 2016