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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Administrátor Domény, Whois protection / Andrejs Pauls

Case No. D2016-1005

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.

The Respondent is Administrátor Domény, Whois protection of Prague, Czech Republic / Andrejs Pauls of Riga, Latvia.

2. The Domain Name and Registrar

The disputed domain name <buycigarettesmarlboro.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint in Czech was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2016, 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 and stating that the Registration agreement for the disputed domain name was in both English and Czech. The Center sent an email communication to the Complainant on May 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 30, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2016.

The Center appointed Ladislav Jakl as the sole panelist in this matter on July 12, 2016. 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 produces, makes business and sells cigarettes in the United States, including the cigarettes MARLBORO, since 1883. The Complainant is the holder of United States MARLBORO word trademark No. 68,502, registered on April 14, 1908, for cigarettes and United States combined MARLBORO trademark No. 938,510, registered on July 25, 1972, for cigarettes (Annex E to the Complaint). The Complainant is also the owner of the domain name <malboro.com>, registered on January 3, 1996 (Annex F to the Complaint).

The disputed domain name <buycigarettesmarlboro.com> was registered on February 2, 2016. The disputed domain name previously resolved to a website offering cigarettes from the Complainant and its competitors. The disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name <buycigarettesmarlboro.com> is identical or confusingly similar to its trademarks MARLBORO, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that the disputed domain name <buycigarettesmarlboro.com> incorporates the Complainant’s trademark MARLBORO in its entirety and that the addition of the generic term “buycigarettes” does not sufficiently distinguish the disputed domain name from trademark of the Complainant. The addition of the generic terms “buy” and “cigarettes” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. Reference is made to the UDRP decision Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, according to which a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. Furthermore, the Complainant’s use and registration of the mark MARLBORO do predate the Respondent’s registration of the disputed domain name. The Complainant concludes that the disputed domain name is confusingly similar to the disputed domain name.

As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for MARLBORO trademarks and that no license or authorization was granted to use the MARLBORO trademark in the disputed domain name. The disputed domain name clearly alludes to the Complainant. Furthermore the Complainant contends that the Respondent is using the disputed domain name to direct Internet users to a site which offers the Complainant’s products for sale. Moreover the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the MARLBORO trademark and illegitimately trade on its fame for commercial gain and profit. The Complainant concludes that the Respondent does not have any rights or legitimate interests in disputed domain name.

Furthermore the Complainant argues that the disputed domain name is also being used in bad faith, as at the time of its registration the Respondent had, no doubt, knowledge of the Complainant’s well-known MARLBORO trademark. The disputed domain name is being used in bad faith, as it is obvious when viewing the website at the disputed domain name one realizes that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the its site, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the website. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that links on the website are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is without authorization capitalizing on the Complainant’s trademark. The Complainant also states that the Respondent’s use of a privacy service to conceal its identity is further evidence of bad faith. The Complainant concludes that above mentioned facts evidence the Respondent’s bad faith registration and use of the disputed domain name under paragraph 4(c)(iii) of the Policy.

In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name <buycigarettesmarlboro.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is 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 states that the burden of proving that all three elements are present lies with the Complainant.

6.1. Language of the Proceeding

The relevant Registrar has informed the Center on May 30, 2016, that registration agreement as used by the registrant for the disputed domain name is Czech and English. The Panel has determined it appropriate that the Center communicate in this matter in English. The Respondent did not provide any comments in this regard. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceeding will be English.

6.2. Substantive elements

A. Identical or Confusingly Similar

The disputed domain name <buycigarettesmarlboro.com> incorporates the Complainant's trademark MALRBORO in its entirety. The addition of the generic terms “buy” and “cigarettes” does not sufficiently distinguish the disputed domain name from trademark of the Complainant (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694). The generic Top-Level Domain (“gTLD”) suffix “.com” does not avoid confusing similarity between a domain name and trademark for the purposes of the Policy (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310). Furthermore, the Complainant’s use and registration of the mark MARLBORO do predate the Respondent’s registration of the Domain Name.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark MARLBORO in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, he has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent appears to have used the website for the sale of cigarettes. As noted in paragraph 2.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. Those requirements, commonly known as the “Oki Data” principles include the use of the website to sell only the trademarked goods, and the site’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

In the present case, the Panel notes that the website, when active, appears to have displayed links to products offered for sale in competition with those of the Complainant. Furthermore, there appears to be no disclaimer on the website to state the nature of the relationship between the Respondent and the Complainant. In the circumstances, and for the reasons further discussed below, the Panel finds that the Respondent’s use of the disputed domain name does not give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent knew or must have known of the Complainant’s trademark MARLBORO at the time it registered the disputed domain name <buycigarettesmarlboro.com>, due to the fact that the Respondent intentionally attempts to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s widely-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.

Moreover, the Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the websites behind the links displayed at the disputed domain name are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the MARLBORO trademark. Such behavior is considered bad faith under the Policy (see Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101; Pfizer Inc. v. jg a/k/a JoshGreen, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049). The Panel finds that disputed domain name is being used in bad faith, as when viewing the website at the disputed domain name it is clear that the Respondent has intentionally attempted (for commercial purposes) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s widely-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <buycigarettesmarlboro.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: July 28, 2016

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