WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Faisal
Case No. D2017-1081
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Muhammad Faisal of Karachi, Sindh, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <marlborocoupons4u.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 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 the Complainant on June 6, 2017 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 June 7, 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 the Respondent of the Complaint, and the proceedings commenced on June 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2017.
The Center appointed Dietrich Beier as the sole panelist in this matter on July 7, 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 is one of the biggest and most famous tobacco companies in the world. One of their brands is Marlboro belonging to the most famous cigarette brands worldwide for which Complainant enjoys trademark protection, among them inter alia the US registration MARLBORO, No. 3,365,560 filed on July 23, 2007 for tobacco products.
The disputed domain name was registered on April 4, 2017.
Under the disputed domain name bittorrent downloads for movies, books, tv-shows and other media are offered.
The Respondent did not reply to the Complaint.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its famous trademarks and that there are neither rights nor legitimate interests in the disputed domain name on the part of the Respondent. The Complainant also alleges that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademarks, and intentionally is attempting to attract Internet users to its website where it offers torrent downloads for commercial gain. Furthermore, the Respondent was already involved in other cases, even with the same Complainant, i.e.,Philip Morris USA Inc. v. Muhammad Faisal, WIPO Case No. D2016-0621 and Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Faisal, WIPO Case No. D2016-1935. In both cases, the domain names were transferred to the Complainants and accordingly showed a pattern of cybersquatting conduct. Thereby, it demonstrates that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for the sign MARLBORO.
The disputed domain name is confusingly similar to this trademark of the Complainant since the addition of the terms "coupon" and "4u" in the disputed domain name are of a purely descriptive nature and do not change the overall impression being created by reference to the dominate element "MARLBORO".
The Panel therefore considers the disputed domain name to be confusingly similar to the trademark MARLBORO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the term "marlborocoupons4u" or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent's use of the disputed domain name reflecting the Complainant's trademark for a website for downloads of bittorent content is not bona fide within the meaning of the Policy. The Respondent has not come forward to rebut the Complainant's assertion in this regard.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In the view of the Panel, the Respondent must have been aware of the famous trademarks of the Complainant when registering the disputed domain name. The Complainant has also not authorized the Respondent to make use of its trademarks. From the record, the Panel does not see any conceivable legitimate use being made by the Respondent of the disputed domain name.
The circumstances of this case, in particular the Respondent's confusingly similar use of a famous trademark and comparable cybersquatting conduct evidenced in other cases indicate that the Respondent registered and used the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location.
The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 <marlborocoupons4u.com> be transferred to the Complainant.
Date: July 18, 2017