WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Anton M. Bahtin

Case No. D2014-1844

1. The Parties

The Complainant is Philip Morris USA Inc., Altria Client Services Inc., Richmond, Virginia, United States of America represented by Arnold & Porter, United States of America.

The Respondent is Anton M. Bahtin, Sverdlovskaya, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <marlbor0.com> and <philipm0rris.com> are registered with Regional Network Information Center, JSC dba RU-CENTER.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 3, 2014 the Center also transmitted the language of the proceedings document to the parties in both English and Russian. On November 6, 2014 the Complainant filed the complaint in Russian.

On November 4, 2014, the Complainant filed the request for suspension of the administrative proceedings due to the parties' efforts to reach the settlement. As the Respondent has offered to transfer the disputed domain names to the Complainant, on December 8, 2013, the Complainant asked for suspension until December 22, 2014 to enable the Respondent to provide it with the transfer codes. On December 24, 2014, the administrative proceeding was one more time suspended because of the parties' attempt to settle the case. Due to the lack of communication from the Respondent, on January 5, 2015, the Complainant requested the Center to have the case reinstated.

The Center verified that the Russian version of 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 the Respondent of the Complaint, and the proceedings commenced on January 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015.

On January 13, 2015, the Registrar informed the Center that the Respondent does not plan to renew the disputed domain name <philipm0rris.com> that was set to expire. On January 15, 2015 the Complainant confirmed that it would like to renew the disputed domain name.

On January 15, 2015, the Registrar informed the Complainant and the Center that the Respondent has submitted to it a transfer letter for both domain names. Though, on January 20, 2015, the Complainant confirmed its request to have the proceeding reinstituted.

An unofficial response was filed with the Center on January 29, 2015. However, there were other email communications from the Respondent on February 4, 2015 and February 12, 2015 and February 23, 2015.

On February 4, 2015, the Registrar confirmed the renewal of <philipm0rris.com> which was made by the Complainant.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 24, 2015. 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 an American company which manufactures, markets, and sells cigarettes in the United States. Its offer includes cigarettes under a famous brand "Marlboro" which history is dated back to 1883.

The Complainant owns, among other, following trademarks:

- MARLBORO – a stylized character trademark registered in the U.S. Patent and Trademark Office on April 14, 1908 under No. 68502 for goods and services in class: 34;

- MARLBOROFILTER CIGARETTES – a figurative trademark registered in the U.S. Patent and Trademark Office on July 25, 1972 under No. 938510 for goods and services in class: 34.

The Complaintant has been operating on the market under its company name "Philip Morris" for over a century. The name has become distinctive and well-known.

In addition, the Complainant has registered domain names reflecting its trademarks - <marlboro.com> as well as incorporating its business name - <philipmorris.com>, <philipmorris.net>, <philipmorris.org> and <philipmorris.info>.

The disputed domain names were both registered on February 3, 2014. They resolve to inactive pages (error messages).

5. Parties' Contentions

A. Complainant

Firstly, the Complainant contends that <marlbor0.com> is confusingly similar to its MARLBORO trademarks. The disputed domain name incorporates the MARLBORO trademark in its entirety, despite an obvious and deliberate misspelling which does not dispel the likelihood of confusion. Moreover, the Complainant refers the Panel to many UDRP decisions stating that the addition of a generic Top-Level Domain ("gTLD") suffix such as ".com" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

Secondly, the Complainant asserts that <philipm0rris.com> is confusingly similar to its company name "Philip Morris". It further points out that its longstanding use of "Philip Morris" as the company name, and the public's association of the name with its tobacco products, create rights sufficient to find confusing similarity. What is more, in the Complainant's view, it is a well - established principle under the U.S. intellectual property law that company or trade names may give rise to trademark rights affording the owner of the name the same protections as any other trademark in certain instances. The very same principle is reflected in the UDRP case law. The Complainant underlines that previous UDRP panels have recognized its rights in the "Philip Morris" name (Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. FA 01534894; Philip Morris USA Inc. v. DavidDelman/DAVID@DELMAN.TV,NAFClaim No. FA 1404001555882). Similarly to the above-mentioned infringement, the disputed domain name incorporates the Complainant's company name in its entirety – the obvious misspelling as well as the gTLD ".com" should not be taken into consideration here.

Thirdly, the Complainant emphasized that the Respondent has no legitimate interests or rights in the disputed domain names. It also has no connection or affiliation with the Complainant, its affiliates, or any of its products. Furthermore, the Respondent has never been known by any name or trade name that incorporates the word "Marlboro" or the term "Philip Morris". It has never received any license, authorization, or consent — express or implied — to use the Complainant's trademarks or its company name in a domain name or in any other manner. The Complainant also believes that the Respondent has never sought or obtained any trademark registrations for MARLBORO or PHILIP MORRIS or any variation thereof. In the Complainant's opinion, it is inconceivable for the Respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks, given the longtime use of it and strength of its brand. Moreover, the Respondent's failure to put the disputed domain names to active use reinforces that it has no legitimate rights or interests in neither <marlbor0 com> nor <philipm0rris.com>.

Finally, the Complainant asserts that the Respondent has registered the disputed domain names in bad faith as he had full knowledge of the Complainant's rights in the MARLBORO trademarks and in "Philip Morris" name due to its fame and wide presence on the Internet. The Complainant also contends that the Respondent is using the disputed domain names in bad faith by diverting the Internet users from the Complainant's websites which was deemed to be sufficient to satisfy the requirement of the Policy by previous UDRP panels. Furthermore, the Respondent must have expected that any use of the disputed domain names would cause harm to the Complainant. As there are no active websites associated with the disputed domain names (they resolve to an error message), it is another evidence of bad faith. What is more, the Complainant underlines that the Respondent also has registered several additional domain names that incorporate misspellings of famous brand names by spelling those brand names with a zero instead of an "o", including; <landrOver.com>; <iPhOnes.com>; <exxOnmObil.com> and <c01gate.com>, among several others.

B. Respondent

In its email communications, the Respondent asserts that it did not pursue any illegal actions connected with the disputed domain names. According to the Respondent, it has never used <marlbor0.com> and <philipm0rris.com>, especially for any kind of business purposes. The Respondent underlines that immediately after he got to know about the Complaint, he offered the Complainant the transfer of the disputed domain names. He also apologized for the delays in responding to email communication. In the Respondent's view, the Complainant has refused to accept the transfer without any reason.

6. Discussion and Findings

(i) Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

The Complaint was filed in English and then supplemented by Russian translation. Accordingly, all the procedural communications by the Center were sent to the Respondent in both English and Russian. However, the Respondent has always been communicating with the Center and the Complainant in English.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English as per paragraph 11(a) of the Rules.

(ii) Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

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

(ii) the respondent has no rights or legitimate interests in the domain name; and

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

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

Firstly, the Complainant proved that it owns two MARLBORO trademarks registered in the U.S. Patent and Trademark Office (No. 68502 and No. 938510) – the first, being a stylized character and the later, being a figurative mark. However, the fact that the trademarks cover graphic elements does not influence the assessment of confusing similarity (Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and cases cited therein). The dominant textual component of the trademarks – a term "Marlboro" – is incorporated in its entirety in the disputed domain name <marlbor0.com> which is sufficient to fulfill requirements of the Policy.

Secondly, the Complainant presented evidence supporting its contentions that it has rights to "Philip Morris" name which has been its company name for more than a century and part of various domain names. As this name is incorporated in the disputed domain name <philipm0rris.com> in its entirety, the Complainant asserts the confusing similarity here. Indeed, common law rights may give rise to trademark rights under paragraph 4(a)(i) of the Policy. The "Consensus view" on this issue, as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), requires a complainant to show that the name has become a distinctive identifier associated with the complainant or its goods or services. In the instant case, the Complainant has submitted evidence of the long-standing use of "Philip Morris" in the United States and its association with the Complainant's products, as well as evidence of the notoriety of the Complainant and its company name in the press and elsewhere. There were also previous UDRP panels which decided that Complainant had common law trademark rights in "Philip Morris" (Philip Morris USA Inc. v. Martial Etame, WIPO Case No. D2014-1368; Philip Morris USA, Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182). Taking into consideration all the evidence and arguments in this matter the Panel determines that the Complainant has demonstrated that the company name "Phillip Morris" has become a distinctive identifier associated with the Complainant's goods such that it may here assert rights to the same under the Policy (See also, Sintef v. Sintef.com, WIPO Case No. D2001-0507).

Both disputed domain names include obvious and deliberate misspellings which are classic examples of typosquatting which has consistently been regarded as creating domain names confusingly similar to the relevant mark or name (RXAmerica, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190). The Panel shares this view and finds that an obvious misspelling does not distinguish <marlbor0.com> from the MARLBORO trademarks. The same goes for <philipm0rris.com>.

Finally, the addition of a gTLD suffix ".com" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416).

Accordingly, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the MARLBORO marks or Philip Morris company name; (c) there is no evidence that the Respondent has been commonly known by the names used in the disputed domain names; (d) there is no evidence that the Respondent has ever sought or obtained any trademark registrations for "Marlboro" or "Philip Morris" or any variation thereof; (d) the disputed domain names do not resolve to any website.

Moreover, the Panel agrees with the Complainant's assertion that by choosing the disputed domain names, the Respondent sought to create an impression of an association with the Complainant. It is widely recognized by UDRP panels that creating such initial confusion signals lack of legitimate rights or interests in a domain name (General Electric Co. v. Optima di Federico Papi, WIPO Case No. D2007-0645).

Consequently, in the absence of any contrary allegations by the Respondent or any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel concludes that the Respondent has no such rights or legitimate interests.

Therefore, the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain names.

Firstly, the disputed domain names were registered in bad faith as the Respondent knew or should have known about the Complainant's right in the MARLBORO trademarks and the Philip Morris company name. Both terms enjoy a great recognition and are widely present on the Internet which has also been confirmed in previous UDRP decisions (Philip Morris Inc. v. Kimyongho, NAF Claim No. FA01541709; Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182). The Panel notes here that the Complainant did not present any evidence supporting its contention that the Respondent has also registered several additional domain names that incorporate misspellings of famous brand names by spelling those brand names with a zero instead of an "o", including <landrOver.com> and <iPhOnes.com>.

Secondly, the disputed domain names are being used in bad faith as this case is a classic example of passive holding which was outlined in many UDRP cases (Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0003; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615). The Panel believes that the very act of having acquired the disputed domain names raise the probability of the Respondent using them in a manner that is contrary to the Complainant's legal rights and legitimate interests. The Panel agrees with the Complainant's assertion that the circumstances of the case including the Respondent making obvious and deliberate misspellings of "Marlboro" and "Philip Morris" while incorporating them to the disputed domain names justify the conclusion that the Respondent aimed at diverting Internet users from the Complainant's websites to the Respondent's websites.

The fact that the Respondent agreed voluntarily to transfer the disputed domain names to the Complainant does not undermine the bad faith finding in this case due to the substantial delay in executing its declarations which made the Complainant reinstate the administrative proceedings.

Thus, the Panel finds that the Complaint has satisfied paragraph 4(a)(iii) 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 names <marlbor0.com> and <philipm0rris.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: March 10, 2015