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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. DNS MANAGER / Misato Takahashi

Case No. D2014-0649

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter, United States of America.

The Respondent is DNS MANAGER of Hong Kong, China / Misato Takahashi of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <marlborolight.net> (the "Domain Name") is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant 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 8, 2014.

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 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2014.

The Center appointed Steven A. Maier as the sole panelist in this matter on June 10, 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

The Complainant is a corporation organized and existing under the laws of Virginia, United States.

The Complainant is the owner of registrations for the trademark MARLBORO including United States trademark number 68502 for MARLBORO registered on April 14, 1908 for cigarettes.

The Domain Name was registered on December 15, 2013.

At the date of the Center's formal compliance check, May 9, 2014 the Domain Name resolved to a website at "www.marlborolight.net" which displayed a page stating: "Service Temporarily Unavailable - The server is temporarily unable to service your request due to maintenance downtime or capacity problems. Please try again later."

5. Parties' Contentions

A. Complainant

The Complainant submits that it and its predecessor entities have manufactured, marketed and sold cigarettes under the MARLBORO brand since 1883.

The Complainant produces evidence of trademark registrations for the mark MARLBORO including the registration referred to above.

The Complainant states that it has spent "substantial time, effort, and money advertising and promoting the MARLBORO trademarks throughout the United States" (although it submits no details). It also states that it owns and operates a website at "www.marlboro.com" in connection with the sale of its products. It asserts, and states that numerous previous WIPO panels have accepted, that its mark has become distinctive and uniquely associated with the Complainant and its products in the United States and worldwide and has the status of a famous mark.

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant points to the fact the Domain Name comprises the whole of its trademark MARLBORO together with the additional term "light". It submits that the addition of a generic term of this kind does nothing to distinguish the Domain Name from its mark. It also submits that the generic Top-Level Domain ("gTLD") ".net" should be disregarded. The Complainant states the Respondent's use of its MARLBORO mark in connection with the Domain Name will inevitably create "initial interest confusion" as to the ownership of the Domain Name.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant says that the Respondent has no connection or affiliation with the Complainant or any of its products. The Respondent does not own or have any rights in any trademark that incorporate the mark MARLBORO nor has it ever been known by that name. The Complainant has not authorised the Respondent to use the mark for the purpose of the Domain Name or otherwise. The Respondent can only have registered the Domain Name for the purpose of diverting Internet users seeking the Complainant's own website and to take unfair advantage of the Complainant's goodwill. This does not give rise to rights or legitimate interests in the name.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant contends that the Respondent can only have registered the Domain Name in the knowledge of the Complainant's MARLBORO mark and for the purpose of luring Internet users to its website. Given the fame of the mark it is inconceivable that the Respondent was unaware of it and, in any event, it would have been discovered from a basic domain name or Internet search. Further, the Respondent is deemed to have constructive knowledge of the Complainant's registered trademark. The Domain Name is not a name that any trader would choose unless it was deliberately trying to create an association with the Complainant and its products and the Respondent has chosen to capitalize on the fame of the Complainant's MARLBORO trademark and to trade off the Complainant's goodwill by attracting Internet traffic that would otherwise go to the Complainant's own website.

The Complainant contends that the Respondent's failure to use the Domain Name for the purpose of any active website is also an indicator of bad faith, as was its attempt to conceal its identity through a name shielding service.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of trademark registrations for the mark MARLBORO including the United States trademark referred to above.

The Domain Name comprises the term "marlboro" together with the term "light" and the gTLD ".net." The Panel finds that the term "marlboro" is the dominant and distinctive part of the Domain Name and is identical to the Complainant's MARLBORO trademark. The Panel accepts the Complainant's submissions that the addition of the generic (or descriptive) term "light" does not serve to distinguish the Domain Name from the Complainant's trademark and that the gTLD should be disregarded for this purpose.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the first element of the test set out under paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Panel accepts the Complainant's submissions, which have not been disputed, that the Respondent is not associated with the Complainant, that the Complainant has never authorised the Respondent to use its MARLBORO trademark for the purposes of the Domain Name or otherwise and that the Respondent has not been commonly known by the Domain Name. There is therefore a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the Domain Name. In order to answer that case it was open to the Respondent to provide evidence of any of the circumstances set out in paragraph 4(c) of the Policy or to raise any other matters in support of any claim to have relevant rights or legitimate interests. However, the Respondent has not filed a Response or otherwise participated in this administrative proceeding and there is no other evidence available to the Panel which is indicative of any rights or legitimate interests in the Domain Name on the part of the Respondent.

Accordingly, the Panel finds that that the Respondent has no rights or legitimate interests in respect of the Domain Name and the second element of the test set out under paragraph 4(a) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's evidence that the Complainant's trademark MARLBORO is well-known throughout the world. The Complainant alleges that the Respondent must have known of its mark and must have registered and used the Domain Name for the purpose of unfairly profiting from that trademark. In the face of these allegations, the Respondent has had an opportunity to explain any other reason for its choice of the Domain Name but has failed to take that opportunity.

In the circumstances, the Panel finds on balance that the Respondent registered the Domain Name in the knowledge of the Complainant's trademark and with the intention of taking unfair advantage of the Complainant's goodwill attaching to the trademark. In particular, the Panel infers that by causing "initial interest confusion" as to the origin of the Domain Name, the Respondent intended to attract Internet users to its website in the mistaken belief that they were accessing a website owned or operated by the Complainant. The Panel finds a registration for this purpose to be in bad faith for the purposes of the Policy.

On the evidence available to the Panel, the Domain Name has only been used for the purposes of a blank or inactive website. However, it is well established in decisions under the Policy that the "passive holding" of a domain name does not prevent a finding of bad faith if that is what is indicated by the overall circumstances of the case. In all the circumstances of this case, the Panel is unable to discern any legitimate use to which the Respondent could put the Domain Name and its conclusions as to bad faith are not, therefore, affected by the lack of any active website.

In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of the test under paragraph 4(a) of the Policy is met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marlborolight.net> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: June 16, 2014

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