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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Rick Swindell / Whois Agent, YourJungle Privacy Protection Service

Case No. D2014-0653

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 Rick Swindell of Scottsdale, Arizona, United States of America, Whois Agent / YourJungle Privacy Protection Service of Colorado Springs, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <marlborosmokes.net> is registered with DropWalk.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2014, 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. The Center sent an email communication to the Complainant April 30, 2014 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 5, 2014.

The Center verified that 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 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2014.

The Center appointed Andrew J. Park as the sole panelist in this matter on June 17, 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 Philip Morris USA Inc., a corporation incorporated in the Commonwealth of Virginia, with its principal place of business in Richmond, Virginia. The Complainant owns the well-known cigarette brand Marlboro, and has been making and selling Marlboro brand cigarettes since 1883. The trademark MARLBORO was registered in the United States on April 14, 1908 (Registration No. 68,502), and is owned by the Complainant.

The disputed domain name <marlborosmokes.net> ("Disputed Domain Name") is registered to the Respondent Rick Swindell, of Scottsdale, Arizona, United States. The Disputed Domain Name was registered to the Respondent on March 4, 2014. The Disputed Domain Name resolves to "www.marlborosmokes.net" an inactive website that reads "This domain is not supported."

5. Parties' Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name contain the MARLBORO trademark owned by the Complainant. The Complainant contends that it has spent substantial time, effort, and money advertising and promoting the MARLBORO trademark throughout the United States, and has thus developed substantial goodwill in the MARLBORO trademark. The Complainant further contends that through such extensive efforts, the MARLBORO trademark has become distinctive and famous.

The Complainant contends that the Disputed Domain Name is confusingly similar to the MARLBORO trademark because it incorporates the MARLBORO trademark in its entirety, and the addition of generic top level domains is irrelevant. The Complainant contends that the addition of the term "smokes" to the MARLBORO trademark in the Disputed Domain Name exacerbates this confusion because the term "smokes" is indicative of the Complainant's MARLBORO tobacco products.

The Complaint contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Respondent has no connection or affiliation with the Complainant, or the products marketed and sold by the Complainant under the MARLBORO trademark. The Complainant contends that the Respondent chose to use the MARLBORO trademark to divert Internet users seeking to visit the Complainant's legitimate website and to trade on the goodwill associated with the MARLBORO trademark. The Complainant further contends that the Respondent's failure to put the Disputed Domain Name to active use reinforces that Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith and with full knowledge of the MARLBORO trademark. The Complainant contends that the Respondent's very method of infringement — using the MARLBORO trademark to divert adult smokers away from the Complainant's website — demonstrates bad faith use under the Policy. Finally, the Complainant contends that the Disputed Domain Name is so "obviously indicative" of the Complainant's Marlboro products that the Respondent's use of the Disputed Domain Name would "inevitably lead to confusion of some sort."

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

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

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

(iii) the Respondent's Disputed Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.

First, it is uncontroverted that the Complainant has established rights in the MARLBORO trademark based on both longstanding use as well as its federal trademark registration in the United States.

Second, the Disputed Domain Name consists of the MARLBORO trademark in its entirety. "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Numerous UDRP panels have held that a domain name is confusingly similar to a trademark where, as in this case, the domain name incorporates the trademark in its entirety. In an earlier case involving the Complainant, a panel found that "marlboro" combined with the name of a color to form a second level domain name was confusingly similar to the MARLBORO trademarks. Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675 (ordering transfer of domain name <marlboroblack.com>).

The addition of the term "smokes" is clearly indicative of the Complainant's MARLBORO tobacco products. The Panel finds that this creates a false association between the Respondent's website and the Complainant's MARLBORO trademark, and inevitably may mislead the public into believing that the Complainant is associated with the Disputed Domain Name. See Wachovia Corporation v. InterMos, NAF Claim No. FA0111000102520 (stating that a "domain name which incorporates Complainant's global mark with a word that describes Complainant's service is confusingly similar to Complainant's mark because it falsely implies an association between Respondent's website and Complainant's mark").

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.

The Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as the Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the Disputed Domain Name. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use its MARLBORO trademark within the Disputed Domain Name and therefore the Respondent in this case is not able to establish rights or legitimate interests in the Disputed Domain Name. Mere registration of the Disputed Domain Name may not of itself confer rights or legitimate interests in the Disputed Domain Name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensor of the Complainant and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Moreover, given the well-known nature of the Complainant's MARLBORO tobacco products, it is clear to the Panel that the Respondent's objective in registering the Disputed Domain Name was to divert Internet users seeking to visit the Complainant's website and to trade on the goodwill associated with the Complainant's MARLBORO trademark. See, e.g., CIMB Group Sdn. Bhd., v. PirvacyProtect.org, WIPO Case No. D2010-1680 (registration of a domain name "for the purpose of misleading or diverting consumers" cannot give rise to rights or legitimate interests).

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in that the Disputed Domain Name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, using the disputed domain name in order to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Panel accepts the arguments of the Complainant that the Disputed Domain Name was registered and is being used in bad faith as they are used to divert Internet users to divert Internet users seeking to visit the Complainant's website and to trade on the goodwill associated with the MARLBORO trademark. Indeed, the Panel finds that the Disputed Domain Name is so obviously indicative of the Complainant's MARLBORO marks that the Respondent's use of the Disputed Domain Name leads to confusion. There is no doubt that the Respondent knew or should have known about the Complainant's trademark rights before registering the Disputed Domain Name. Such use of the Disputed Domain Name is neither legitimate, nor in good faith. The registration of a confusingly similar or identical domain name in order to misdirect Internet users is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Hanover Communications Ltd., v. Maison Tropicale, S.A., WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited, WIPO Case No. D2007-0883. The fact that the Disputed Domain Name resolves to "www.marlborosmokes.net", an inactive website that reads "This domain is not supported", does not prevent a finding of bad faith registration and use under the Policy. See WIPO Overview 2.0, paragraph 3.2.

For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that that the Disputed Domain Name has been registered and used in bad faith by the Respondent.

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, <marlborosmokes.net> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: July 1, 2014

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