WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Whoisguard Protected, Whoisguard, Inc. / MARK JAYSON DAVID
Case No. D2016-2194
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 Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / MARK JAYSON DAVID of Laoag City, Ilocos Norte, Philipines, self-represented.
2. The Domain Name and Registrar
The disputed domain name <pallmall-marlboro.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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. The Center sent an email communication to the Complainant on November 2, 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 November 4, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016. A communication from the Respondent was received on November 11, 2016.
Upon the Complainant’s request dated November 11, 2016, the proceedings were suspended for the parties to seek to resolve the dispute on November 14, 2016. Upon the Complainant’s request dated December 14, 2016, the proceedings were reinstituted on December 15, 2016, with a new Response due date as December 29, 2016.
A formal response was not received by the specified due date and on January 3, 2017, the Center informed the Parties of the commencement on the Panel Appointment process.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 11, 2017. 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 the Commonwealth of Virginia, United States.
The Complainant manufactures, markets and sells cigarettes under the trademark MARLBORO. The Complainant is the proprietor of registered trademarks in the United States consisting of or including the word “Marlboro”. The earliest registered trademark in the United States was the trademark registration no. 68,502 MARLBORO, registered on April 14,1908 in international class 34.
The Complainant has registered the domain name <marlboro.com> which resolves to the Complainant’s United States website “www.marlboro.com”.
The disputed domain name resolves to a website that displays a fake Facebook page reading “FOX Live News” with an article about the singer Beyoncé. If the Internet visitor clicks on this article, he or she is taken to a website soliciting drivers for the Uber driving service.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark MARLBORO, that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has registered and is using the disputed domain name in bad faith.
With regard to the confusing similarity between the trademark and the disputed domain name the Complainant argues that the disputed domain name is confusingly similar to its MARLBORO trademark because it incorporates the famous trademark MARLBORO in its entirety, and because the addition of the generic Top-Level Domain (“gTLD”) suffix, such as “.com”, is irrelevant in considering whether a disputed domain name is confusingly similar to a trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not known by the name MARLBORO, and is not making a bona fide offering of goods or services using that name; (ii) the Respondent is diverting, for the Respondents’ commercial gain, Internet users to websites containing advertisements, and thereby away from the Complainant’s website; (iii) the Complainant cannot find evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of services; and (iv) the Complainant, after due diligence, cannot find evidence that the Respondent has been commonly known by the disputed domain name.
With regard to the disputed domain name having been registered and being used in bad faith, the Complainant submits that (i) it is inconceivable that the Respondent was unaware of the Complainant’s famous trademark MARLBORO when registering the disputed domain name; (ii) that the Respondent by using the domain name for a website containing a link to a site from which it obtains revenues, intentionally attempted to attract Internet users to his site for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, and endorsement of the Respondents’ websites; and (iii) the Respondents registered the disputed domain name with the intent to capitalize on the notoriety of the Complainant’s trademark.
The Respondent sent a communication to the Center on November 11, 2016, which included the following message: “Hi! i would like to know what can i do to fix this issue”. However, the Respondent did not file a Response to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive trademark MARLBORO in its entirety but also incorporates the trademark PALLMALL, which belongs to a third party, namely British American Tobacco.
Previous UDRP panels have consistently found that the respondent’s inclusion of a third-party trademark in a domain name does not eliminate the visual impression that the disputed domain name is associated with the complainant’s trademark. (See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; (<viagra-nascar.com>) and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (<viagra-propecia-xenical.com>); see also WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674; Yahoo! Inc. v. Scott Mcvey, WIPO Case No. D2011-1486.
Accordingly, although the disputed domain name incorporates another famous cigarette brand – PALL MALL, the disputed domain name is nonetheless considered, by the Panel, to be confusingly similar to Complainant’s MARLBORO mark.
B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because the Respondent did not file a Response, there is no evidence showing that Respondent is a licensee of, or otherwise affiliated with the Complainant, and has been authorized by the Complainant to use its MARLBORO trademark.
There is also no evidence that Respondent has been commonly known by the disputed domain name, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.
The disputed domain name was registered after the Complainant’s first use and filing for registration of the trademark in respect of which the disputed domain name is confusingly similar. The disputed domain name not only consists of the Complainant’s famous cigarette trademark MARLBORO, but also the cigarette brand PALL MALL.
The Respondent uses the disputed domain name for a fake Facebook page containing links to a website from which, on the balance of probabilities, the Respondent derives revenue. Therefore, the Panel is convinced that the Respondent has used the disputed domain name, and its associated website, to secure commercial gain by trading on the recognition and goodwill associated with the Complainant’s and the third−party’s trademark. Such use of the disputed domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is also satisfied that the Complainant’s MARLBORO marks are famous around the world, including in Philipines, where the Respondent is apparently located. The registration and use of the Complainant’s MARLBORO marks significantly predate the registration of the disputed domain name, which reproduces the mark in its entirety. It is therefore clear to the Panel that the Respondent was aware of the Complainant’s famous trademark and intentionally registered the disputed domain name to take predatory advantage of the Complainant’s MARLBORO trademark and the goodwill of the third party’s cigarette brand PALL MALL.
By using the disputed domain name for a fake Facebook page which is linked to a website from which the Respondent on the balance of probabilities derives revenue, Respondent is attempting to capitalize on the two well-known cigarette brands.
Such use combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s MARLBORO mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location as prohibited by paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(b)(iv) of the Policy.
7. Remedy: Transfer of Domain Name containing a Third Party’s Trademark
The Panel notes that the disputed domain name contains, in addition to the Complainant’s trademark, a trademark owned by a third party. This fact raises the issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought by the Complainant – being, transfer of the disputed domain name to the Complainant.
The Panel notes, that there have been a number of previous cases brought under the Policy in relation to domain names containing a third-party’s trademark.
Where the complaint was jointly brought by all complainants with an interest in the domain name, and the complainants indicated a remedy which was mutually satisfactory to all of their interests, previous UDRP panels were generally well-disposed to transferring domain names to whichever relevant entity was specified in the complaint. See for example, Nokia Corporation, Navteq Corporation v. Juha Vainio, WIPO Case No. D2008-0772 (<nokianavteq.com>), where the complainants requested transfer of the disputed domain name to the first complainant, the Nokia Corporation.
Similarly, where the complaint was brought by only one rights-holder, but the complainant had secured the written consent of the additional mark owner whose mark was contained in the domain name, panels have been willing to issue transfer accordingly. See Pfizer, Inc. v. Martin Marketing, supra (<viagra-nascar.com>), where the Panel stated that the authorization from the third-party trademark holder was sufficient to relieve potential concern that transfer of the disputed domain name to Complainant would interfere with the rights of the third-party trademark holder; similarly Verizon Trademark Services LLC v. Cyrus de Ocampo, WIPO Case No. D2012-0282, where the Complainant obtained the consent of the third party trademark holder to the requested transfer remedy.
In cases like the present case, where a single complainant has filed a complaint containing a domain name which is composed of a mark owned by the complainant and the mark of a third party, but without having obtained the express consent of the third-party mark holder, UDRP panels have in some cases transferred the domain name - without prejudice - to the rights of others (see WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, supra (<whatsappiphone.com>), which provides a discussion on this point, noting that all transfer orders under the Policy are - without prejudice to the rights of third parties; see also F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751), while other UDRP panels have elected to cancel the disputed domain name (see in case Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020 (<incasemacbook.com>); Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (<yahoohotmail.com> et al), ordering cancellation of one domain name which contained the complainant's mark and an additional third-party trademark, while permitting transfer of the remaining domain names containing only the complainant's mark; Educational Testing Service v. The IELTS TOEFL Centre, WIPO Case No. D2010-1755 (<ieltstoefl.com>); and Lilly ICOS LLC v. idesigns, WIPO Case No. D2005-0482 (<great-cialis-viagra.biz>).
This Panel follows the approach taken in WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois, supra, that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains, in addition to the complainant’s trademark, a trademark owned by a third party. Neither the Policy nor the Rules contain a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contain a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy (See WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois, supra).
For the above reasons, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant in the event that its case under the three requirements of the Policy is established.
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 <pallmall-marlboro.com> be transferred to the Complainant.
Date: January 25, 2017