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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Jimbo Goldsmith-Ireland

Case No. D2013-0465

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 Jimbo Goldsmith-Ireland of Port Hope, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <marlborocigaretteshop.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2013. On March 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2013, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 11, 2013.

On March 12, 2013, the Center received an email communication from the Respondent. On the same day, the Center informed the Complainant of the possibility to submit a suspension request to explore a possible settlement between the parties. On March 15, 2013, the Complainant indicated it did not wish to suspend the proceeding.

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 March 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on April 10, 2013.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 3, 2013. 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.

4. Factual Background

The Complainant is the holder of the following trademarks registered with the United States Patent and Trademark Office (USTPO):

- MARLBORO, Reg. No. 68,502, registered for cigarettes in international class 34 on April 14, 1908;

- MARLBORO (figurative), Reg. No. 938,510, registered for cigarettes in international class 34 on July 25, 1972.

The disputed domain name was registered on May 6, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant manufactures, markets, and sells cigarettes in the United States, including cigarettes under its registered MARLBORO trademark. 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 has spent substantial time, effort, and money advertising and promoting the MARLBORO trademark throughout the United States. The MARLBORO trademark has become distinctive and is uniquely associated with the Complainant and its products. Substantial goodwill has been developed in the mark and the trademark is well known and famous throughout the United States.

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

The Respondent has registered the disputed domain name but held its identity masked in Namecheap’s WhoIs record. Only since the filing of the Complaint has the registrant of the disputed domain name been identified as the Respondent.

When the Complainant first discovered the disputed domain name, it resolved to a website, which redirected Internet users to a website offering “reviews” of various electronic cigarettes.

The Complainant has repeatedly contacted the Respondent requesting a transfer of the disputed domain name to the Complainant. The Respondent has replied that he had used the disputed domain name to “boost the seo” (search engine optimization) value of this name. The Respondent has since disabled the website linked to the disputed domain name but has retained it, stating on October 24, 2012 that he would “comply with legal rules” but was unclear of which rules applied, and asked the Complainant to identify them. The Respondent has effectively conceded the Complainant’s rights in the disputed domain name and has made repeated promises that he would transfer the disputed domain name to the Complainant. This promise was not kept and the Respondent has ceased communication with the Complainant. Upon information and belief, the Respondent registered the disputed domain name and established the website linked to it in an attempt to trade on the goodwill of the Complainant and the MARLBORO trademark.

The disputed domain name is confusingly similar to the MARLBORO trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere addition of “cigarette” and “shop” does not distinguish the disputed domain name from the Complainant’s trademark. The addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademark. The Respondent was never known by any name or trade name that incorporates the word “Marlboro.” On information and belief, the Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed could never do so given the Complainant’s pre-existing and exclusive rights to this mark throughout the United States. The Respondent has not received any license, authorization, or consent — express or implied — to use the MARLBORO trademark in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since.

The Respondent’s misappropriation of the MARLBORO mark by its inclusion in the disputed domain name is no accident. The Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO trademark with the Complainant’s tobacco products. Rather, the Respondent’s objective at the outset was to divert Internet users seeking to visit the Complainant’s legitimate website and boost search engine optimization values. Such misappropriation of the MARLBOROtrademark does not give rise to a right or legitimate interest but portends the Respondent’s bad faith.

The Respondent has registered the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in the MARLBOROtrademark. Even a simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO trademark as source identifier for its tobacco products. The Complainant’s rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online. The Respondent is deemed to have constructive notice of the Complainant’s trademark rights by virtue of the Complainant’s federal registrationsfor the MARLBOROtrademarks. Additionally, the deliberate attempt of the Respondent to conceal his identity through the use of Namecheap.com’s WhoisGuard service, further implicates bad faith on the part of the Respondent in registering and using the disputed domain name.

Upon information and belief, some or all of the current registrant information as updated in the WhoIs record for the disputed domain name on March 6, 2013, is false or fraudulent. The Respondent’s use of false or fraudulent information in connection with its registration of the disputed domain name, and his change of that information the day after the Complainant filed its Complaint, is yet further evidence that the Respondent registered the disputed domain name in bad faith.

The Respondent’s use of the exact MARLBORO trademark to lure adult smokers to its website, demonstrates bad faith use under the Policy. The Respondent’s ultimate refusal to transfer the disputed domain name despite promising to do so constitutes bad faith. It makes no difference that the Respondent has disabled the website linked to the disputed domain name. The Respondent’s registration and avowed use of the disputed domain name for search engine optimization evinces bad faith. Even after disabling the website, by his own admission, the Respondent has been using the disputed domain name for the purpose of “redirecting [users] to another site” and “boosting the seo [search engine optimization] value” of the disputed domain name. The Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name is so obviously indicative of the Complainant’s MARLBOROproducts that the Respondent’s use of this domain name would inevitably lead to confusion of some sort.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied:

(i) the disputed 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 disputed domain name; and

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

Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the registered MARLBORO trademarks and the domain name <marlboro.com> by the evidence submitted. Also, the Panel notes that the Complainant’s MARLBORO trademark has been found well known world wide for tobacco products in a number of prior UDRP cases. See for example Philip Morris USA Inc. v PrivacyProtect.org / zhou fei, WIPO Case No. D2012-1035.

The disputed domain name consists of the Complainant’s trademark MARLBORO with the addition of the generic words “cigarette”, “shop” and the generic Top Level Domain (“gTLD”) “.com”. According to well established consensus among UDRP panels, the gTLD is not distinguishing.

The Panel finds that the Complainant’s MARLBORO trademark is the distinctive part of the disputed domain name and that the addition of the generic words “cigarette” and “shop” is not sufficient to avoid Internet user confusion in relation to the trademark. Rather, the added words are more likely to increase the risk of confusion because of their close association with the Complainant’s business.

The Panel finds the disputed domain name confusingly similar to the trademark in which the Complainant has established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

In all cases, including when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1, and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Complainant has asserted that no permission to use the MARLBORO trademark in the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name which incorporates the Complainant’s trademark. Also, the Complainant has asserted that the disputed domain name is used by the Respondent to redirect Internet users to a website which offers reviews of various electronic cigarettes.

Having considered the submissions of the Complainant, and the lack of a formal response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the MARLBORO trademark in the disputed domain name. Further the Panel finds, based on the evidence provided on the record, that the Respondent is not commonly known by the disputed domain name. Also, the Panel finds no other indications that the Respondent is making a legitimate noncommercial or fair use of the domain name.

In the light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The disputed domain name was registered more than a century after the Complainant’s trademark registration of MARLBORO for cigarettes.

The Complainant has asserted that the Respondent has had constructive notice of the Complainant’s rights in the MARLBORO trademark when registering the disputed domain name.

The Panel finds, as the majority of prior UDRP panels, that the concept of constructive notice is not incorporated in the UDRP. See WIPO Overview 2.0, paragraph 3.4 (“Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP.”) However, due to the world-wide notorious nature of the MARLBORO trademark for cigarettes, and the fact that the Respondent has used the disputed domain name in relation to cigarettes, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name’s word combination without having prior knowledge of the Complainant’s rights and business. In accordance therewith, it is the Panel’s firm view that the Respondent has registered the disputed domain name in awareness of the Complainant’s rights.

The Complainant has stated that the Respondent’s use of a privacy service proves the Respondent’s bad faith and that the contact information provided by the Respondent is false or fraudulent. The Panel has noted that the contact information of the Respondent has been changed at some point after the Complainant obtained the underlying registrant information from the privacy service in September 2012.

The Policy, paragraph 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.

The Complainant has asserted that the Respondent has avowed that he registered the disputed domain with the purpose of improving the search engine optimization value of the Respondent’s website. An e-mail conversation between the Complainant’s representatives and a Mr. J. Goldsmith has been submitted by the Complainant. The e-mail address of Mr. Goldsmith corresponds to the e-mail address previously registered as contact information for the disputed domain name.

By the evidence submitted, the Panel finds that the Respondent’s purpose with the registration and use of the disputed domain name was to optimize its search engine ranking and to redirect visitors to its website from the disputed domain name. Further, the Panel notes that Respondent has agreed to transfer the disputed domain name to the Complainant.

As mentioned above, there are no indications that the disputed domain name is used for a bona fide offering of goods or services. Together with the Respondent’s statements in its e-mail conversation with the Complainant’s representatives, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location. All in all, the Panel finds that the disputed domain name has been registered and used in bad faith.

The third and final element of the Policy is fulfilled.

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 <marlborocigaretteshop.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: May 14, 2013

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