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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Andrejs B Pauls

Case No. D2017-0474

1. The Parties

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

Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Andrejs B Pauls of Riga, Latvia.

2. The Domain Name and Registrar

The disputed domain name <marlborotaxfree.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 Complainant on March 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On March 10, 2017, the Center transmitted the Complaint Deficiency Notification to the Parties regarding the Mutual Jurisdiction. Complainant filed an amended Complaint on March 10, 2017.

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 Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2017.

The Center appointed Bernhard Meyer as the sole panelist in this matter on April 18, 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

Complainant, Philip Morris USA Inc. (hereinafter PM USA), manufactures, markets and sells cigarettes in the United States. The trademark MARLBORO was registered on April 14, 1908, in the United States in class 34 (registration number 68,502). Complainant is also the owner of the domain name <marlboro.com>, the site resolving to Complainant's official website for its Marlboro products and created on March 6, 2000.

The disputed domain name <marlborotaxfree.com> was registered on September 27, 2016. The disputed domain name previously resolved to a website selling cigarettes under the Complainant's trademarks.

5. Parties' Contentions

A. Complainant

Complainant asserts that the disputed domain name <marlborotaxfree.com> is confusingly similar to its MARLBORO trademark and that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant argues that Respondent registered the disputed domain name with the sole purpose of diverting Internet users from Complainant's website for its own financial profit. The disputed domain name <marlborotaxfree.com> resolves to a website under the domain name <premiumcigarettes.co.uk> on which grey market goods or counterfeit MARLBORO cigarettes are offered for purchase. Such behavior, Complainant claims, constitutes bad faith registration and use of the disputed domain name.

Complainant finally submits that Respondent's bad faith registration and use of the disputed domain name is supported by Respondent's attempt to conceal its true identity to the public.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, notwithstanding Respondent's default, Complainant must establish that:

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

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and that

(iii) the disputed domain name was registered and has been used in bad faith.

In the following, the Panel reviews the different elements.

A. Identical or Confusingly Similar

The disputed domain name <marlborotaxfree.com> incorporates Complainant's trademark MARLBORO in its entirety, adding the term "taxfree".

The Panel finds that the distinctive feature within the disputed domain name <marlborotaxfree.com> is Complainant's trademark MARLBORO. In contrast, the term "taxfree" has no distinctive power and is therefore insufficient to prevent a finding of confusing similarity (see Philip Morris USA Inc. v Domain Admin/ DA Privacy Ltd, WIPO Case No. D2014-1134).

Thus, the Panel concludes that the disputed domain name is confusingly similar to the MARLBORO trademark and Complainant prevails under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has demonstrated its rights in the MARLBORO trademark and did state that Respondent was never authorized to use the MARLBORO trademark in any manner. Complainant herewith established a prima facie case that Respondent lacks any rights or legitimate interests to use the trademark. Hence, the burden to submit evidence for having rights or legitimate interests to reflect Complainant's trademark in the disputed domain name shifts to Respondent (see WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition, paragraph 2.1).

There is no indication at hand that Respondent made any fair and noncommercial use of the disputed domain name. Quite to the contrary, there is strong evidence that the only reason Respondent incorporated the MARBORO trademark in the disputed domain name, was to capitalize on the fame of Complainant's trademark for personal financial gain through the sale of grey market or counterfeit MARLBORO cigarettes. Such course of action is opposed to paragraph 4(c) of the Policy.

Having no other indications, the Panel finds that Complainant succeeds under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant provided the Panel with screenshots of Respondent's website which prove that Respondent attempted to sell and distribute grey market or counterfeit MARLBORO cigarettes through the disputed domain name <marlborotaxfree.com>. Furthermore, it is documented that Respondent sought to conceal its true identity by using an identity-shielding service.

The evidence provided by Complainant leads the Panel to conclude that Respondent's only intention by registering the disputed domain name <marlborotaxfree.com> was to take advantage of the widespread recognition of the trademark MARLBORO for financial gain. It is moreover proof of that Respondent, at any time during registration, and while using the disputed domain name, was fully aware of Complainant's rights. According to paragraph 4(b)(iv) of the Policy, such behavior is evidence of bad faith registration and use. Respondent's attempt to conceal its identity further corroborates the finding that Respondent acted in bad faith.

Having established bad faith registration and use, the panel holds that Complainant prevails under 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 name <marlborotaxfree.com> be transferred to Complainant.

Bernhard Meyer
Sole Panelist
Date: May 2, 2017

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