World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. PrivacyProtect.org / zhou fei

Case No. D2012-1035

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 PrivacyProtect.org of Nobby Beach, Queensland, Australia/ zhou fei of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <marlboroscigarettes.com> is registered with UK2 Group Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 16, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On May 18, 2012, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2012.

The Center verified that the Complaint together with the amended 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 May 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2012.

The Center appointed Petter Rindforth as the sole panelist in this matter on June 25, 2012. 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 Panel notes that the Complaint was initially filed citing “PrivacyProtect.org” as Respondent, based on the publicly available WhoIs information. The Registrar then identified “zhou fei” as the holder of the disputed domain name, and the Complaint was amended, now referring to “zhou fei” as Respondent. “PrivacyProtect.org” informed the Center with an “automated reply” on May 30, 2012, stating that “it is likely that this domain name has enabled Privacy Protection Service”, that “PrivacyProtect.org” is “not the actual owner”, and informed of a special online link where the owner (registrant) could be contacted. However, as the information on “the actual owner” of <marlboroscigarettes.com> was not provided by “PrivacyProtect.org”, the Panel will refer to “PrivacyProtect.org” and “zhou fei” collectively as “the Respondent”.

The Panel shall issue its Decision based on the Complaint, the amended Complaint, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):

- MARLBORO, registration no. 68,502, registered on April 14, 1908 in respect of cigarettes in international class 34.

- MARLBORO and Red Roof design, registration no. 938,510, registered on July 25, 1972 in respect of cigarettes in international class 34.

The disputed domain name <marlboroscigarettes.com> was registered on February 17, 2011.

No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Marlboro cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the trademark 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 states that MARLBORO cigarettes are well known to adult smokers.

The Complainant has registered the domain name <marlboro.com>, which points to the Complainant’s website, “www.marlboro.com”, which enables access to information regarding the Complainant, Marlboroproducts, and special offers to age-verified adult smokers 21 years of age or older.

According to the Complainant, the disputed domain name points to a website located at “www.marlboroscigarettes.com”, which advertises and sells counterfeit Marlboro cigarettes. Additionally, the said website advertises and purportedly sells goods manufactured by one of the Complainant’s competitors.

The Complainant states that the Respondent has utilized a privacy service to mask the Respondent’s true identity, listing “PrivacyProtect.org” as the owner and administrative and technical contacts of the disputed domain name in the publicly available WhoIs records.

The Complainant sent a cease and desist letter to the Respondent on March 20, 2012, detailing the Complainant’s rights in the MARLBORO trademarks, and demanding transfer of the disputed domain name. The Respondent did not reply.

The Complainant argues that <marlboroscigarettes.com> is confusingly similar to the Complainant’s trademark, as the disputed domain name incorporates the Complainant’s trademark with the addition of the term “cigarettes,” which is clearly indicative of the Complainant’s products.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the products provided by the Complainant under the MARLBORO trademarks. The Respondent is not known by any name or trade name that incorporates the word ”marlboro”, and the Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof. Rather, the Respondent’s objective at the outset was to divert Internet users seeking to visit the Complainant’s legitimate website. Such misappropriation of the MARLBORO trademarks does not give rise to a right or legitimate interest.

Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith.

The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the MARLBORO trademark in the United States of America.

The Panel also notes that the MARLBORO trademark is well-known world wide for tobacco products, something that has been concluded in a number of prior UDRP cases. See Philip Morris USA Inc. v.

PrivacyProtect.org/ Nicola Pieropan, WIPO Case No. D2011-1735 (“finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels”); see also Philip Morris USA Inc. v. Cooltobacco.com, akalgor Riodonov, WIPO Case No. D2005-0245 (stating that the Complainant had used the MARLBORO trademarks “in a continuous and uninterrupted manner since 1883 and with the modern history of the brand beginning in 1955, and has established considerable goodwill in its mark throughout United States and the world. Complainant’s trademark MARLBORO has been determined as famous by previous WIPO administrative panels”).

The relevant part of the disputed domain name is “marlboroscigarettes”. The Panel concludes that the disputed domain name consists of the Complainant’s trademark MARLBORO, with the addition of the letter ”s”, and the generic word “cigarettes”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. In this case it in fact rather seriously increases the likelihood of confusion as it exactly describes the goods related to the trademark.

The Panel therefore concludes that <marlboroscigarettes.com> is confusingly similar to the Complainant’s trademark MARLBORO.

B. Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.

The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name/s incorporating the trademark MARLBORO. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in <marlboroscigarettes.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. On the contrary – the Panel finds that the Respondent’s use of the disputed domain name has been to mislead customers seeking for the Complainant’s goods to buy what appear to be counterfeit versions offered by the Respondent as well as goods manufactured by one of the Complainant’s competitors. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests”).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant is a company based in United States of America.

The Respondent is apparently located in China, using the privacy protect service of a company located in Australia.

As stated above, the disputed domain name consists of the Complainant’s trademark (with an extra “s”) with the addition of a generic word that describes the specific goods covered by the said trademark. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “cigarettes” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).

The disputed domain name is used for a website advertising and selling what appear to be counterfeit Marlboro cigarettes, as well as goods manufactured by one of the Complainant’s competitors. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).

Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

7. Decision

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 <marlboroscigarettes.com> be transferred to the Complainant.

Petter Rindforth
Sole Panelist
Dated: July 9, 2012

 

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