WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PHILIP MORRIS USA INC. v. Lu Xi
Case No. D2011-1059
1. The Parties
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 Lu Xi of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <marlboroskyline.com> is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 23, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 24, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 24, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 28, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 June 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on July 27, 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.
Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be in English on the grounds that the language of the website associated with the disputed domain name is English, evidencing the Respondent’s level of comfort with the English language. For example, both the “Shipping & Returns” page and the “Privacy Notice” page on the Respondent’s website are written entirely in English
The Complainant also argues that the Complainant does not reside in China and is unfamiliar with the Chinese language. As a result, the proceeding will be unduly delayed, and the Complainant would have to incur additional expenses for translation, if all documents were to be filed in Chinese.
The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. The website under the disputed domain name is written entirely in English and designed to do business worldwide in English. There can be no doubt that the Respondent is able to handle these proceedings in English. The Panel notes, that the fact the Complainant does not understand Chinese is also not of great relevance. The Complainant has a large presence in China and could, if necessary, have chosen a representative who was conversant in Chinese. Neverthelesss, given the Respondent has not responded to the case on its merits or in relation to the language of the proceeding, it would be unfair on the Complainant to request them to translate the Complaint into Chinese. As the only documents before the Panel are in English, the decision will be issued in English.
4. Factual Background
The Complainant manufactures, markets, and sells in the United States cigarettes, including cigarettes under its MARLBORO trademarks, of which MARLBORO SKYLINE, is a particular brand style. Marlboro cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
The Complainant is the registered owner of the following trademarks, among others, on the principal register of the United States Patent and Trademark Office (“PTO”):
April 14, 1908
MARLBORO and Red Roof design
July 25, 1972
August 18, 1992
The Respondent has registered the disputed domain name <marlboroskyline.com>. The disputed domain name resolves to the website located at “www.marlboroskyline.com” (the “Infringing Website”), which displays and offers for sale numerous cigarette products bearing the Complainant’s trademarks and those of its affiliate, Trademarks LLC, including MARLBORO, MARLBORO SKYLINE, BENSON & HEDGES, VIRGINIA SLIMS, PARLIAMENT, L&M, and CHESTERFIELD cigarettes. Internet users can buy cigarettes from the website under the disputed domain name. The Respondent has also included on the Infringing Website a copyright notice incorporating the MARLBORO Mark that reads “Copyright Notice © 2011 Marlboroskyline.com. All Rights Reserved”.
The Respondent has also provided false or incomplete contact information in the WhoIs records. The “Shanghai Pudongxinqu, Shanghai 128641” address provided by the Respondent does not include a specific address at which to contact Respondent. Similarly, the telephone number listed by Respondent represents China’s country code, Beijing’s area code, and a telephone number that appears to be a listing of digits in nearly sequential order.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <marlboroskyline.com> made up of the registered trademarks MARLBORO and SKYLINE is identical or confusingly similar to the Complainant’s registered trademarks MARLBORO and SKYLINE. The combination of two marks is likely to cause confusion as to a relationship with the Complainant.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for MARLBORO or SKYLINE.
Registered and used in bad faith
There is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in MARLBORO and SKYLINE and could also have by a simple Internet search confirmed this. The unauthorized sale of cigarettes by the Respondent is clearly use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a very simple case of clear trademark hijacking for the purposes of commercial gain which the UDRP was designed to stop.
A. Identical or Confusingly Similar
The disputed domain name <marlboroskyline.com> is made up of two registered trademarks MARLBORO and SKYLINE. The combination of the two does not stop the disputed domain name being identical to the registered marks and the first part of the policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the website under the disputed domain name where the Complainant’s trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in Paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <marlboroskyline.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with Paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
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.
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, <marlboroskyline.com>, be transferred to the Complainant.
Dated: August 7, 2011