WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Frank Lazarus
Case No. D2011-0722
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Frank Lazarus of El Paso, Texas / Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <outwitthewest.com> (the “Domain Name”) is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2011. On April 27, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On April 28, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2011.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 16, 2011. 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. The decision due date has been extended to July 22, 2011 by the Panel.
4. Factual Background
Complainant manufactures, markets, and sells MARLBORO cigarettes, which is among the most recognized brand of cigarettes in the United States.
Since 2003, Complainant’s promotional efforts for its MARLBORO brand have included a trivia contest conducted in association with the OUTWIT THE WEST mark.
Respondent registered the Domain Name on April 17, 2008.
5. Parties’ Contentions
Complainant contends that the Domain Name should be transferred to it because: (i) Complainant is the exclusive owner of the OUTWIT THE WEST service mark and the Domain Name is identical or confusingly similar to it; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith.
(i) The Domain Name is Identical or Confusingly Similar to the OUTWIT THE WEST Mark
Complainant claims that it has common law rights in its OUTWIT THE WEST mark. Complainant asserts that since 2003, the promotional efforts for its MARLBORO brand have included a trivia contest conducted in association with its OUTWIT THE WEST mark. Complainant has presented this promotion to age-verified adult smokers, 21 years of age or older, through various promotional materials including direct mail, email, at retail on point-of-sale advertisements and MARLBORO cigarette packs, and online at “www.marlboro.com”, the official website for the MARLBORO brand. The most recent OUTWIT THE WEST contest consisted of ten rounds of five trivia questions each, and allowed participants to collaborate and form teams of up to four people per team. The winning team of the contest received USD 1,000,000 and giveaways were awarded to other participants. Through these promotional efforts, Complainant alleges that content bearing Complainant’s OUTWIT THE WEST mark has been seen by millions of adult smokers.
A search for “Outwit the West” using the GOOGLE search engine conducted on December 9, 2010 – near the end of the most recent OUTWIT THE WEST contest – returned over 300,000 references. A review of the first five pages of search results indicates that all or substantially all of the references are to Complainant’s OUTWIT THE WEST promotion. Such results confirm both the familiarity among adult smokers of Complainant’s OUTWIT THE WEST promotion and the fact that this mark is a distinctive identifier of Complainant’s services. Respondent himself evidences the distinctiveness and renown of the mark by admitting, in correspondence with Complainant, that he designed his website linked to the Domain Name as a “social networking” website for the OUTWIT THE WEST trivia contest. Previous UDRP panels have relied on this type of evidence to determine the existence of common law trademark and service mark rights.
Complainant emphasizes it has spent substantial time, effort, and money advertising and promoting its OUTWIT THE WEST mark to adult smokers throughout the United States, and has thus developed substantial goodwill in the mark. Through such widespread efforts, the mark has become distinctive and is uniquely associated with Complainant and its services. Thus, Complainant contends it has established common law rights in this mark through its longstanding and exclusive use of the mark throughout the United States. Complainant urges that its common law mark, like registered marks, qualifies for protection under the Policy.
Complainant asserts that the Domain Name consists of the exact OUTWIT THE WEST mark without any other wording. The Domain Name is thus identical to this mark. Moreover, as previous panels have found, the addition of a generic top-level domain name, such as “.com” or “.net,” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
Courts and administrative panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. However, the Domain Name resolved to a website, in which Respondent was attempting to imply that it was an official website for Complainant’s OUTWIT THE WEST trivia contest and/or a social networking site designed by Complainant for discussion of contest trivia questions. At the very least, Respondent was attempting to convey that the website was somehow affiliated with Complainant and its contest. Significantly, the phrase “Welcome to Outwit The West Trivia Contest for $1,000,000” appeared in the heading of the website, and users were promised the opportunity to win USD 1,000,000 – the same amount awarded in Complainant’s contest – in at least two locations on the homepage of the site. A similar message appeared in the GOOGLE search results for “outwit the west.” The website was identified in GOOGLE results as “Outwit The West Triv[i]a Contest,” with a description of “Outwit the West 4 Marlboro Trivia Contest. Win a million dollars.” As with Complainant’s official OUTWIT THE WEST contest, Respondent’s website invited users to form teams to participate in the contest. The site also invited users to upload the team logo created by users on the official MARLBORO website,“www.marlboro.com”. Additionally, Respondent featured Western-themed imagery similar to that used in Complainant’s own promotional campaigns. Respondent, without Complainant’s authorization, also reproduced the copyright-protected questions used in Complainant’s OUTWIT THE WEST trivia contest as well as screenshots from the OUTWIT THE WEST contest on the MARLBORO site. Respondent’s site has prominently featured advertising and/or solicited money throughout the duration of this dispute. Indeed, when Complainant first discovered Respondent’s site, Respondent actively encouraged users to send money or to click on advertisements to derive revenue, variably stating “click this banner ad to help us pay for hosting it’s free”; “please help us keep this site free donate”; and “long hours go into administering this website. Buy me a cup of coffee?” Although Respondent has changed his site into a parked webpage, upon information and belief Respondent still derives revenue from the site each time users click on the links that currently appear on it.
Finally, Complainant contends that Respondent’s inclusion of a disclaimer on his site is immaterial to the issue of consumer confusion. This is particularly likely given the location of the small-print disclaimer at the very bottom of the screen, which can only be viewed by users after scrolling through several pages of text.
(ii) Respondent has No Rights or Legitimate Interest in the Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. On information and belief, Respondent has never sought or obtained any trademark or service mark registrations for “Outwit The West” or any variation thereof, and indeed, could not do so because the OUTWIT THE WEST mark belongs to Complainant. Additionally, Respondent is not a licensee of Complainant and has not obtained permission to use the mark, or any domain names incorporating this mark, either at the time Respondent registered and began using the Domain Name, or at any time since.
Upon discovering the Domain Name and the linked site, Complainant attempted informally to resolve the dispute by sending an email to Respondent in October 2010, asking Respondent to call him to discuss Complainant’s concerns regarding Respondent’s Domain Name and associated site. In his response, Respondent indicated that he would “rather converse via e-mail” because “[i]t’s important to have written documentation in the event I’m in some kind of trouble.” Moreover, despite the fact that Complainant did not indicate that its concerns were trademark-related, Respondent volunteered that he “checked to make certain the name was not trademarked before [he] purchased the domain [name] . . . .” Finally, Respondent, admitting knowledge of Complainant’s OUTWIT THE WEST contest, stated disingenuously “I am not attempting to do anything but create a social networking site for participants in this contest.” Complainant states that on November 3, 2010, after Respondent had not responded at all to Complainant’s concerns, Complainant sent a formal cease and desist letter to Respondent. Respondent never replied to this letter. Rather, Respondent revised his website to limit access only to registered users. Upon information and belief, the only way to register for the site was through Facebook. By registering through Facebook, Respondent required would-be users to grant him access to sensitive personal data, including: name, Facebook profile picture, gender, Facebook user ID, lists of “friends” on Facebook, email addresses, and birthday. On December 9, 2010, Complainant sent a final follow-up letter demanding transfer of the Domain Name. Respondent again did not reply to this letter, necessitating the filing of this Complaint. Instead, he replaced the content on his website with pay-per-click advertising.
Complainant argues that Respondent chose to use the OUTWIT THE WEST mark in his Domain Name to draw Internet users to his website by capitalizing on the association of this mark with Complainant’s promotional OUTWIT THE WEST contests. Moreover, Respondent’s purported plans to use the Domain Name for “a social networking site for participants in [the OUTWIT THE WEST] contest” cannot establish Respondent’s rights or legitimate interests in the Domain Name. Here, Respondent’s supposed use of the Domain Name in connection with a social networking website for Complainant’s USA’s OUTWIT THE WEST contest is particularly illegitimate given Respondent’s use of a domain name identical to Complainant’s mark and his failure to differentiate his website from one maintained by Complainant. Rather, Respondent simply promoted his site as an official OUTWIT THE WEST website, reproducing content verbatim from the official site maintained by Complainant.
Further, Respondent’s website is not a legitimate “fan site,” especially because the Domain Name consists of Complainant’s USA’s OUTWIT THE WEST mark without any accompanying wording. Thus, Respondent’s use of the exact mark, in and of itself, is illegitimate. In addition, a respondent cannot obtain a commercial benefit from a fan site, and the site must be clearly distinctive from any official website. Respondent’s repeated monetary solicitations and requests for visitors to click on banner advertisements, combined with his efforts to deceive visitors into believing that they were accessing Complainant’s official site, further prevent Respondent from establishing any rights or legitimate interests in the Domain Name.
(iii) Respondent has Registered and is Using the Infringing Domain Name in Bad Faith
Complainant argues that Respondent has registered the Domain Name in bad faith by doing so knowing of Complainant’s rights in the OUTWIT THE WEST mark. As evidenced by Respondent’s alleged plan to create a “social networking” site for the OUTWIT THE WEST contest, there is no doubt that Respondent was fully aware of the OUTWIT THE WEST mark before registering the Domain Name.
In addition, Complainant urges that Respondent’s registration of a domain name identical to Complainant’s OUTWIT THE WEST mark to attract Internet users to his website for commercial gain in and of itself demonstrates bad faith registration. When a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the complainant suggests opportunistic bad faith. Moreover, Respondent’s registration and use of the Domain Name creates initial interest confusion, which occurs when Internet users are attracted to Respondent’s website based on Respondent’s use of the OUTWIT THE WEST mark. Respondent’s use of the Domain Name to derive advertising revenue from confused Internet users also establishes his bad faith. And Respondent’s reproduction of copyright-protected portions of Complainant’s MARLBORO website on the Website further illustrates Respondent’s bad faith.
Respondent’s failure to reply to Complainant’s cease and desist letters – particularly when Respondent insisted that Complainant detail its concerns in writing – further underscores Respondent’s bad faith use of the Domain Name. Instead of responding to Complainant’s concerns, Respondent elected to restrict site access to registered users, and later, replaced the site with a parked webpage consisting of pay-per-click advertisements.
Finally, Complainant alleges that Respondent’s original use of a false address and telephone number in the WhoIs records for the Domain Name, as well as his ongoing use of apparently incorrect or incomplete contact information, further support a finding that the Domain Name was registered and is being used in bad faith. Initially, Respondent identified his address and telephone number as “[…] Ave., Roswell, New Mexico 88201” and “(505) […],” respectively. The Roswell, New Mexico address, however, does not exist in U.S. Postal Service records. Similarly, upon calling the listed telephone number, Complainant received an error message. After submitting a false WhoIs information complaint to ICANN on December 8, 2010, Respondent changed the WhoIs information. The revised information submitted by Respondent, however, is for an unlisted land line physically located in Mountainair, New Mexico, and a physical postal address in El Paso, Texas. Upon information and belief, given the irreconcilable physical locations of Respondent’s alleged address and telephone land line, at least some of this information is false. Indeed, Respondent is not associated with any publicly-available property records for the listed address in El Paso, Texas. Last, Respondent’s use of a barely-noticeable disclaimer on the Website cannot cure Respondent’s bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has submitted evidence sufficient to establish common law rights in its OUTWIT THE WEST service mark. This finding is consistent with the view of prior UDRP panels that a complainant may successfully assert common law trademark rights where, as here, the complainant shows “that the name has become a distinctive identifier associated with the complainant or its goods and services.” See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7 (“WIPO Overview 2.0”). Moreover, such common law rights can be established through use of a service mark in association with a promotional contest. See Mars, Inc. v. Raveclub Berlin, NAF Claim No. 0097361 (July 16, 2001) (finding complainant established common law rights in the CLASSIC OR CLUNKER mark used exclusively in association with car giveaway promotional contest).
With Complainant’s rights established, the Panel also determines that the Domain Name is “identical or confusingly similar to a trademark or service mark in which the Complainant has rights,” in accordance with paragraph (4)(a)(i) of the Policy. In particular, the Domain Name incorporates in full the Complainant's OUTWIT THE WEST mark and consists of this exact mark without any other wording. Moreover, as is universally accepted, the addition of the generic top-level domain name (i.e., “.com”) is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a protected mark.
B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent has used Complainant’s OUTWIT THE WEST mark in the Domain Name to draw Internet users to his website by knowingly capitalizing on the association of Complainant’s mark with the promotional OUTWIT THE WEST contests. Respondent is not affiliated with Complainant nor has Complainant authorized Respondent to use the OUTWIT THE WEST mark in the Domain Name or elsewhere. Respondent’s use of the Domain Name in connection with a social networking website related to the OUTWIT THE WEST contest is illegitimate given the Domain Name is identical to Complainant’s mark and Respondent has reproduced content verbatim from Complainant’s official site rather than differentiate the content. Furthermore, Respondent should not obtain a commercial benefit from his purported fan site. See e.g., Richard “Cheech” Marin, Tommy Chong v. Traced, Inc., WIPO Case No. D2009-1273 (posting of advertising links on fan site demonstrated impermissible commercial use; domain name ordered transferred). Here, Respondent’s monetary solicitations and requests for visitors to click on banner advertisements, combined with efforts to confuse visitors into believing that they had reached Complainant’s official website, further prevent Respondent from establishing any rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that Complainant has made out a prima facie showing of Respondent’s lack of rights or legitimate interests to the Domain Name, which has not been answered by Respondent. The Panel thus finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel considers that the decisive issues in this case are whether or not Respondent has exhibited conduct that fits into bad faith registration and use by (i) the intentional registration of the Domain Name to capitalize on Complainant’s goodwill in its OUTWIT THE WEST mark, with (ii) the Domain Name being used in bad faith to draw Internet users to Respondent’s website by the association of the Domain Name with Complainant’s promotional OUTWIT THE WEST contests.
There is nothing in this case to suggest that Respondent was not fully aware of Complainant's mark and in fact targeted the mark at the time Respondent registered the Domain Name, nor did Respondent offer any evidence to that effect. Instead, it is quite clear that Respondent registered the Domain Name precisely because it did incorporate Complainant’s OUTWIT THE WEST mark. See Wal-Mart Stores, Inc. v. Po Ser, WIPO Case No. D2009-1450.
There are several ways in which a complainant can demonstrate that a domain name was registered and used in bad faith. Here, Complainant has submitted unrebutted evidence that, pursuant to paragraph (4)(b)(iv) of the Policy, Respondent’s use of the Domain Name constitutes an intentional attempt, for commercial gain, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's OUTWIT THE WEST mark as to source, sponsorship, affiliation or endorsement.
Therefore, the Panel finds that Respondent registered and used the Domain Name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
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, <outwitthewest.com> be transferred to the Complainant.
Dated: July 29, 2011