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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PM USA v. Lee Smither

Case No. D2014-0002

1. The Parties

Complainant is PM USA of Richmond, Virginia, United States of America (“US”), represented by Arnold & Porter, US.

Respondent is Lee Smither of Houston, Texas, US.

2. The Domain Name and Registrar

The disputed domain name <marlboroecigs.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2014. On January 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2014, the Registrar 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 January 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2014.

The Center appointed Timothy D. Casey as the sole panelist in this matter on February 12, 2014. 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

Complainant sells cigarettes in the US, and has done so under various trademarks for over a century. MARLBORO, US Trademark No. 68,502, was registered for cigarettes by a Complainant predecessor entity in 1908 after first use in 1883. A graphic trademark containing a red roof design and the text “Marlboro” was registered as US Trademark No. 938,510 by Complainant in 1972 after first use in 1954. Complainant has registered the domain name <marlboro.com>.

The disputed domain name resolves to the website “www.marlboroecig.com”. On or prior to August 6, 2013, the contents of that website included at title “The E-Cig Shoppe,” and appeared to promote or sell “E-Cigs” which the website stated made it “easy and pleasurable” to quit smoking. See Complaint, Annex F, pp. 5-6. Complainant sent a cease-and-desist letter to Respondent on August 6, 2013 regarding use of the disputed domain name and the MARLBORO mark, and by the time Complainant filed the Complaint on January 2, 2014, the disputed domain name resolved to a “parking” website advertising various services from GoDaddy, the registrar of the disputed domain name, provide a list of seemingly unrelated advertisement links, and offer the disputed domain name itself for sale. See Complaint, Annex E.

5. Parties’ Contentions

A. Complainant

Complainant alleges the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark because the disputed domain name includes the trademark in its entirety, and the addition of “ecigs” does not distinguish the disputed domain name from the trademark. The letters “ecigs” are, according to Complainant, a well-known abbreviation for “electronic cigarettes,” which is a tobacco product alternative to regular cigarettes.

Complainant further alleges that Respondent has no legitimate interests or rights in the disputed domain name. Respondent has no affiliation with Complainant nor has Complainant licensed or authorized Respondent to use the MARLBORO trademark.

Complainant also alleges that Respondent both registered the disputed domain name in bad faith and continues to use it in bad faith. The MARLBORO trademark is famous, and Respondent is intentionally benefiting from confusion with the famous trademark. Respondent’s registration was in bad faith because Respondent had knowledge of the famous trademark and Complainant’s rights in the trademark. Use of the disputed domain name was also in bad faith, as demonstrated by the website targeting users of electronic cigarettes, and was also in bad faith when the same website became a parking site with ads and offering the disputed domain name for sale.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In view of the default and the absence of any reply to the Complaint by Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

1. the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

2.respondent has no rights or legitimate interest in the domain name; and

3. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name can be easily parsed to include the MARLBORO trademark, namely “marlboro,” followed by the letters “ecigs”. The Panel agrees with Complainant that “ecigs” can be interpreted as an abbreviation for “e-cigarettes” or “electronic cigarettes,” both of which describe the goods associated with the trademark and therefore do nothing to distinguish the disputed domain name. A domain name that contains the exact trademark can be evidence that confusing similarity exists between the trademark and the domain name, and this evidence is especially strong where the trademark is used at the beginning of the domain name, as is the case here. Furthermore, where the remainder of the disputed domain name is easily parsed as a clear reference to a type of product that is within the class of goods for which the trademark registration and rights have been established, the remainder of the disputed domain name does not detract from the confusion, but further strengthens it.

B. Rights or Legitimate Interests

The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. A respondent may have rights or legitimate interests in a disputed domain name if the respondent was commonly known by the domain name, or if the respondent’s use, prior to notice of the dispute, was in connection with a bona fide offering of goods or services. Respondent is in default and has therefore provided no evidence that Respondent is commonly known by the disputed domain name.

The evidence of Respondent’s use prior to the cease-and-desist letter of August 6, 2013 may be an actual offering of goods or services, but because the Panel finds that the electronic cigarettes sold at that time via the disputed domain name to be within the class of goods for which Complainant has registered trademark rights, the Panel also finds that Respondent has no rights or legitimate interests in using the disputed domain name for the sale of such products. While the cease-and-desist letter likely constitutes notice of the present dispute and hence evidence of use after that time may not be relevant to this Decision, the Panel also finds there is no evidence of a bona fide offering of goods or services in the parking website.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered the disputed domain name in bad faith. Lacking any evidence to the contrary, the Panel is inclined to believe Complainant’s allegation that Respondent knew of Complainant’s trademarks prior to registration, and that either Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business (perhaps hoping electronic cigarette sales would displace sales of Complainant’s traditional cigarettes), or Respondent intentionally registered and used the disputed domain name for Respondent’s own commercial gain based in part of the likely confusion with Complainant’s mark.

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 <marlboroecigs.com> be transferred to Complainant.

Timothy D. Casey
Sole Panelist
Date: February 26, 2014

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