WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. ADN HOSTING

Case No. D2007-1609

 

1. The Parties

Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

Respondent is ADN HOSTING, Delaware, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <marlborofactory.com> is registered with Melbourne IT, also trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2007. On November 2, 2007, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On November 5, 2007, Melbourne IT transmitted by email to the Center its verification response confirming that Respondent is the current registrant and providing contact details. On November 7, 2007, the Center transmitted to Complainant a Complaint Deficiency Notification. On November 7, 2007, the Complainant submitted an amendment to Complaint to the Center which addressed the Center’s Deficiency Notification.

On November 14, 2007, the Center noted to Melbourne IT that the domain name <marlborofactory.com> was set to expire on December 10, 2007, and requested, pursuant to Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy, that the domain name <marlborofactory.com> be placed in Registrar Lock status pending the conclusion of this administrative proceeding.

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”), 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 Respondent of Complaint, and the proceedings commenced on November 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 4, 2007. Respondent did not submit any response. Accordingly, the Center issued a Notification of Respondent Default to Respondent on December 5, 2007.

The Center appointed William F. Hamilton as the sole panelist in this matter on December 12, 2007. 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

Complainant manufactures, markets, and sells cigarettes, including cigarettes under its famous MARLBORO and MARLBORO LIGHTS trademarks. MARLBORO cigarettes have been made and sold by Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products. A summary of the relevant trademarks is provided below:

Trademark

Registration No.

Date
Registered

MARLBORO

68,502

April 14, 1908

MARLBORO Red Roof Design

938,510

July 25, 1972

MARLBORO LIGHTS

1,039,412

May 11, 1976

MARLBORO LIGHTS Label

1,039,413

May 11, 1976

MARLBORO LIGHTS MENTHOL Label

1,544,782

June 20, 1989

MARLBORO ULTRA LIGHTS Label

1,651,628

July 23, 1991

Complainant has registered the domain name <marlboro.com>.

Respondent used the website located at “www.marlborofactory.com” to advertise and sell apparent counterfeit MARLBORO cigarettes “at factory price”. Respondent prominently displayed both the widely known MARLBORO word mark and the widely known MARLBORO trade dress.

When counsel for Complainant sent Respondent a cease and desist letter demanding the transfer of <marlborofactory.com> to Complainant, Respondent replied via email on August 26, 2007, inquiring only as to “how much money you can offer for the domain name marlborofactory.com?”. Respondent then changed the Infringing Website to read: “Dear smokers, Your favorite website has been closed by Philip Morris USA Inc.” Thereafter, the message was changed to state, “Website closed”.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent used the MARLBORO trademarks in an effort to confuse consumers into purchasing counterfeit cigarettes which, although bearing packaging and marks virtually identical to that used by Complainant in connection with its MARLBORO cigarettes, were not authentic MARLBORO brand cigarettes.

Complainant further asserts that Respondent has no rights or legitimate interests in <marlborofactory.com>. Indeed, Complainant’s widely known MARLBORO trademarks are asserted to be integral to Respondent’s counterfeiting operation.

Finally, Complainant asserts the domain name <marlborofactory.com> has not been registered or used in good faith as Respondent used false contact information when registering the mark, utilized the site for the sale of counterfeit products, and attempted to sell the domain name to Complainant in response to the initial cease and desist letter.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain names are identical or confusingly similar to the Complainant’s trademarks or service marks; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Ward and Grabebootie Inc., WIPO Case No. D2003-0185 (May 28, 2003).

A. Identical or Confusingly Similar

Numerous WIPO administrative panels have determined that the MARLBORO trademarks are widely known. See, e.g., Philip Morris USA Inc. v. Shelly, WIPO Case No. D2006-1367 (January 5, 2007) (noting that the MARLBORO trademarks “are among the most valuable trademarks in the world”); see also Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245 (May 10, 2005).

The domain <marlborofactory.com> prominently contains the famous MARLBORO mark. The Panel finds that the domain name is confusingly similar to Complainant’s trademarks and is likely to cause confusion. Playboy Enterprises International Inc. v. Joao, WIPO Case No. D2006-1106 (December 1, 2006). See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.1.

B. Rights or Legitimate Interests

Respondent has made no attempt to demonstrate any rights or legitimate interests in the use of the domain name. The Respondent chose the widely known MARLBORO trademarks to draw Internet users to its website thus capitalizing on the association of the MARLBORO trademarks with Complainant’s tobacco products. AT&T Corp. v. Amjad, WIPO Case No. D2003-0327 (July 29, 2003); See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.2. Nor does this dispute involve a claim by the Respondent of prior authorized use as a legitimate distributor or as a related company. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2.3. Indeed, Complainant asserts, and the Respondent has not denied, that Respondent has used the domain to market unauthorized, counterfeit goods. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (July, 19, 2005); Farouk systems Inc. v. Originatlchi.com, WIPO Case No. D2007-1201 (October 9, 2007). Respondent did not present the Panel with evidence of any kind of rights or legitimate interests to the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 4.6 (panel may draw negative inferences in absence of a response). The Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the domain name <marlborofactory.com>.

C. Registered and Used in Bad Faith

The Panel finds the domain name was registered and used in bad faith. Respondent’s conduct presents clear indicia of bad faith. The Respondent is located in the United States and sold tobacco products. It is inconceivable the Respondent was not aware of the MARLBORO trademarks. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.4. The Respondent provided incorrect contact information when registering the domain name. Hoffmann-La Roche Inc. v. Mill, WIPO Case No. D2007-0721 (July 11, 2007). See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.6. Nor is it of any significance that Respondent has now placed a notice “Website Closed” at the domain name. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.5.

Moreover, as stated by another WIPO Panelist, the “sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith. This conduct supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name 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, sponsorship, affiliation or endorsement of Respondent’s website and products. Courts, too, have severely punished counterfeiters who ply their wears on the Internet using deceptive domain names. The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable”. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (October 9, 2007). See also, Bayer AG v. Globex International, WIPO Case No. D2007-0812 (August 7, 2007).

 

7. Decision

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 <marlborofactory.com> be transferred to Complainant.


William F. Hamilton
Sole Panelist

Dated: December 26, 2007