WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Keyword Marketing, Inc.
Case No. D2008-0031
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by Schellenberg Wittmer, Switzerland.
The Respondent is Keyword Marketing, Inc., Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is <mxtronica.com> (the “Domain Name”), registered with BelgiumDomains, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008, electronically and in hardcopy on January 10, 2008. On January 9, 2008 and January 14, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 14, 2008, 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”), 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”).
3.2 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 January 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2008.
3.3. The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on February 20, 2008. The Panel finds that it was properly constituted. It 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
4.1 The Complainant applied for registration of the trademark MXTRONICA (Application No. 56875/2005) in Switzerland on August 24, 2005. The registration was published on October 18, 2005 and is valid until August 24, 2015. The Complainant has also registered the mark MXTRONICA (IR No. 873396) in numerous countries including Turkey, Russian Federation, Japan, Australia, Norway, Republic of Korea and in the European Union.
In 2005, the Complainant registered the trademark MXTRONICA in some Latin American countries, including Mexico, Argentina, Brazil, Uruguay, Venezuela, Honduras, Costa Rica, Nicaragua.
4.2. The registrations have been made for Class 34, i.e. for tobacco, products for smokers and matches and/or for Class 41, i.e. for education, providing of training, entertainment, sporting and cultural activities.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) In addition to the factual reasons as to prior registration of the trademark MXTRONICA in the European Union, Latin American and other countries around the world, the Complainant had registered various domain names containing the trademark MXTRONICA (e.g. in Argentina). It had also on April 11, 2006, registered the domain name <mxtronica.com.mx> for Mexico.
(ii) Since 2005, the Complainant had used the trademark MXTRONICA (sometimes in connection with MARLBORO, another trademark of the Complainant) to communicate with adult smokers and to organize events, in particular concerts and club nights. On January 7, 2008, all of the first 10 search results delivered by the search engine “google.com” for the word “mxtronica” referred to events organized by the Complainant or by a company affiliated to the PMI group of companies
(iii) The disputed domain name was registered after the Complainant had registered and used the mark MXTRONICA in numerous countries and after the Complainant had registered national domain names consisting of the word “mxtronica”. The disputed domain name is identical to Complainant’s registered trademark and its previously registered domain names.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) There has never been any relationship between the Complainant and the Respondent. The Respondent is not a licensee of the Complainant, nor has it received any permission or consent to use the trademark.
(ii) The Respondent is not commonly known by the disputed domain name. The Respondent’s company name appears to be “Keyword Marketing, Inc.”.
(iii) The Respondent has not used, and there is no evidence of demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The websites that pop-up under the disputed domain name merely contain links to other websites, which offer adult content, dating services as well as goods and services as diverse as smokers’ articles, red wine or DVD rental.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The disputed domain name was registered solely for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The content of the website under the disputed domain name reveals that the Respondent does not conduct any legitimate commercial or non-commercial business activity in connection with the word “mxtronica”. In addition, the Respondent’s disputed website “www.keywordmarketinginc.com” shows no content at present.
(ii) By using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
(iii) Further, in addition to using the Complainant’s trademark MXTRONICA, the Respondent also uses the Complainant’s trademark MARLBORO various times and by using the trademarks of the Complainant as a domain name and on its website, the Respondent misleads Internet users on its website in order to generate traffic.
The Complainant requests a decision that the Domain Name be transferred to the Complainant.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
6.1 The Complaint was filed in the English language. The language of the Registration agreement is English.
B. Other Procedural Matters
6.2 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Furthermore, having gone through the series of communications as set out above under the section on Procedural History, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.3 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.4 The Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.5 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
6.6 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.7. Where the Respondent chooses not to present any evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the Respondent, or that it accepts the factual claims of the Complainant, or even that it does not wish to respond or defend its perceived interest in the disputed domain name. (See: Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., / Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808).
C. Identical or Confusingly Similar
6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.9. In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.10. The Complainant has appended to the Complaint a long list of trademarks that incorporate the MXTRONICA trademark. It is quite clear that the Complainant is the owner of a large number of trademarks in various jurisdictions that simply comprise the word “mxtronica”. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights.
6.11. In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
6.12. According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name. However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy or any other right, then the complainant is deemed to have made out this element of the Policy.
6.13. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the mark of the Complainant with a view to attracting Internet users to its website, where it proposes commercial links for different goods or services to those offered by the Complainant. The Panel accepts that such activity does not provide the Respondent with a right or legitimate interest in the Domain Name.
6.14. As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
6.15. The Panel concurs with what was held in the case of Owens Corning v. NA, WIPO Case No. D2007-1143, namely that if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.16. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed Domain Name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made its case that the Respondent has no rights or legitimate interests in the disputed Domain Name which is confusingly similar to the Complainant’s mark.
6.17. Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
E. Registered and Used in Bad Faith
6.18. The Panel accepts the Complainant’s contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the MXTRONICA mark. This is inherently probable given the undisputed fame of the MXTRONICA mark.
6.19. Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the Domain Name with a view to diverting Internet users with an interest in Mxtronica products to its website for its own commercial gain.
6.20. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.21. Given that the Respondent has failed to show any evidence of rights or legitimate interests (for the reasons set out under the heading of rights or legitimate interests above), and the use by the Respondent of the Domain Name in connection with a domain parking service, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.22. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant.
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, <mxtronica.com> be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Dated: March 13, 2008