The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Richard Jones of Toulouse, France.
The disputed domain name <marlbro.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 14, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 14, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2010.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 14, 2010. 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.
1. The Complainant manufactures markets and sells tobacco products, including cigarettes.
2. The Complainant has used the trade mark MARLBORO on cigarettes since 1883.
3. The Complainant is the owner of United States Federal Trade Mark Registration No. 68,502 for the word mark MARLBORO, registered since April 14, 1908.
4. Sales and promotion of goods bearing the MARLBORO trade mark has been enormous and predates the filing date of the disputed domain name by decades.
5. The disputed domain name was registered on May 18, 2004.
6. A website corresponding with the disputed domain name provides a number of links to third party websites, some of which offer goods sold in competition with Complainant's products.
7. There is no relationship between the parties and the Complainant has not authorized the respondent to use the MARLBORO trade mark or any variation thereof, nor to register any domain name incorporating the MARLBORO trade mark or any variation thereof.
8. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
The Complainant submits that the disputed domain name is confusingly similar to a mark in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, 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.
Having considered the Complainant's case and the available evidence, the Panel finds the following:
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Absent contest by the Respondent, the Panel accepts that the Complainant's United States Federal trade mark registration is valid and subsisting. The Panel also accepts that Complainant's trade mark has acquired a secondary significance through long term use and promotion and uniquely indicates the Complainant's goods. The Complainant therefore has rights in the trade mark.
For the purpose of comparison of the domain name with the mark, the gTLD, “.com”, can be ignored, leaving only the phonetically trivial omission from the domain name of the first “o” of the trade mark which does nothing to dispel an association with the Complainant and its trade mark.
Accordingly, the Panel finds that the Complainant has met the first requirement of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests1.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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.
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the disputed domain name to re-direct Internet users to, inter alia, commercial websites that promote the cigarettes of competitors in business to the Complainant. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name2.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and therefore finds that the Complainant has satisfied what was required of it under Paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith:
(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 website 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 website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are examples of both registration and use in bad faith. It is therefore logical to first test the facts against those given circumstances.
The Panel is of the view that the use of the disputed domain name falls squarely within paragraph (iv) above. The Panel has already found the domain name to be confusingly similar to the Complainant's trade mark MARLBORO. The Panel finds that the likelihood of confusion as to source is therefore highly likely.
Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is a finding that it is more likely than not such an intention existed; absolute proof is not required and the Panel is entitled to make reasonable inferences unless the evidence is clearly contradictory3.
The links in question include websites devoted to ways in which to stop smoking, or to cut price cigarette vendors, offering for sale cigarettes not only made by the Complainant but also by the Complainant's competitors. The Panel finds it more likely than not that the Respondent is benefitting from pay-per-click revenue resulting from the likely confusion between the trade mark and the domain name and so finds that the Respondent had the requisite intention for commercial gain.
The Panel finds that the disputed domain name was registered and used in bad faith and that the Complainant has satisfied the third and final element of the Policy.
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, <marlbro.com>, be transferred to the Complainant.
Debrett G. Lyons
Dated: May 28, 2010
1 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
2 See, for example, MEDIATIS S.A. v. Packalo S.A.RL. Cyberger and Stan Virgiliu, WIPO Case No. D2007-0312, stating that “The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name”.
3 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the complaint).