WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Nelia Andrade

Case No. D2018-0098

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 Group AB, Sweden.

The Respondent is Nelia Andrade of Southampton, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

2. The Domain Name and Registrar

The Disputed Domain Name <marlboro-company.com> is registered with Google Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 18, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 18, 2018, 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 January 23, 2018 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 January 29, 2018.

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 January 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 19, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on February 26, 2018. 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 has marketed and sold cigarettes and tobacco products under trademark MARLBORO since 1883, having spent considerable amount of time and money for advertising and promoting its trademark.

The Complainant is the proprietor of the numerous registrations for MARLBORO trademark since 1908, within, inter alia, the United States, including the following relevant ones:

The Complainant has operated the domain name <marlboro.com> since March 6, 2000 and domain name <marlboro.net> since August 15, 1998. On the website under the domain name <marlboro.com> there is information in respect of the Complainant, MARLBORO products and special offers for smokers 21 years old or older.

The Complainant has provided evidence that previous UDRP panels have determined MARLBORO trademark as being famous. See, Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide"); Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 ("the Panel has no hesitation in finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels").

According to the current record, the Disputed Domain Name <marlboro-company.com> was registered on December 3, 2017.

As at the date of this decision, the Disputed Domain Name does not resolve to any active website.

5. Parties' Contentions

A. Complainant

The Complainant points out that its MARLBORO trademark is well-known with numerous USPTO trademark registrations. The Complainant has manufactured and has sold cigarettes under its MARLBORO trademark since 1883, that is much earlier than the Disputed Domain Name was registered on December 3, 2017.

The Complainant contends that the Disputed Domain Name is confusingly similar to MARLBORO trademark, since the Disputed Domain Name incorporates the Complainant's trademark in its entirety and the addition of the term "company" does not negate the confusing similarity.

The Complainant further contends that the Respondent is not commonly known by the Disputed Domain Name, which evinces lack of rights or legitimate interests. Furthermore, the Complainant has not licensed, authorized or in whatever form permitted the Respondent to register the Disputed Domain Name.

The Complainant asserts that since the Respondent included the MARLBORO trademark in the Disputed Domain Name in its entirety, the Respondent demonstrated its knowledge and familiarity with the Complainant's brand and business.

The Complainant also contends that the Respondent had employed a privacy service to hide its identity at the time of filing the Complaint, which can be supported as an inference of bad faith registration and use of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to have a right to a transfer of the Disputed Domain Name, the Complainant shall prove the following three elements:

(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.

In reliance upon the arguments and evidence provided by the Complainant, the Panel concludes as follows.

A. Identical or Confusingly Similar

It is incontrovertible that the Complainant has established rights in the MARLBORO trademark based on its more than century long use and its numerous trademark registrations not only in the United States but worldwide. It is obvious that over the hundred years of use of the MARLBORO trademark, the Complainant has made many efforts to promote the trademark and its notoriety all over the world.

Furthermore, the Complainant has referred to a number of UDRP decisions in which MARLBORO trademark has been found to be well-known worldwide. In view of this, the Panel concludes that MARLBORO trademark is indeed famous and well-known throughout the world. See also Philip Morris USA Inc. v. Wan Wang, WIPO Case No. D2011-0584 ("this Panel has no hesitation in that the Trade Marks [Marlboro] are well-known marks worldwide"); Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171 ("The Complainant's trademarks are not only distinctive but also largely used and well-known all over the world").

The Panel finds that the Disputed Domain Name incorporates the Complainant's trademark MARLBORO in its entirety combined with the hyphen and the term "company". As previous UDRP panels have recognized, the incorporation of a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 ("The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark").

The addition of the term "company" to the Disputed Domain Name does not affect in any way the confusing similarity with the Complainant's trademark MARLBORO and even strengthens an impression that the Disputed Domain Name refers to the official website of the Complainant and contains the information about the brand MARLBORO. Also, the addition of a hyphen to the Disputed Domain Name does not render the Disputed Domain Name dissimilar from the Complainant's trademark. See Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214) ("hyphens do not "serve to dispel Internet user confusion here").

Further, for the purpose of determining whether the Disputed Domain Name is confusingly similar to the Complainant's trademark, the generic Top Level Domain ("gTLD") ".com" is inconsequential. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11, the applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's trademark MARLBORO.

Accordingly, the Panel finds that the Complainant has satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

The Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name since the Respondent is not commonly known by the Disputed Domain Name and has not been licensed, authorized or anyhow permitted by the Complainant to register and to use any domain name which incorporates the Complainant's trademark. Thus, the Respondent has no connection and/or affiliation with the Complainant and correspondingly has no legitimate interest in the Disputed Domain Name.

As is seen from the evidence presented by the Complainant, the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the Disputed Domain Name and respectively has not demonstrated any effort for legitimate use of the Disputed Domain Name. On the contrary, at the date of filing the Complaint, the Disputed Domain Name is being passively held and the Respondent has used a privacy service to register the Disputed Domain Name to hide the identity which the Respondent's turn, suggests lack of rights or legitimate interests in the Disputed Domain Name.

Furthermore, the Panel concludes that in view of the global fame of the MARLBORO trademark it is highly unlikely that anybody could legitimately adopt this Disputed Domain Name for commercial use other than for creation of confusion with the Complainant.

Accordingly, the Panel finds that the second element of UDRP has been satisfied.

C. Registered and Used in Bad Faith

For the purposes of determining if there is a bad faith registration and use of the Disputed Domain Name, the Panel considered the circumstances as set out in paragraph 4(b) of the Policy.

Firstly, the Panel finds that the MARLBORO trademark was registered and used for the first time more than 100 years ago and it has acquired global notoriety, not only among smoking consumers, but also among all full-aged individuals. Furthermore, the Complainant's MARLBORO trademark has been acknowledged as well-known worldwide by numerous prior UDRP decisions. The Complainant has also operated the domain name <marlboro.com> since March 6, 2000. The Disputed Domain Name was registered on December 3, 2017. Previous UDRP panels have found that "where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred" (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Complainant alleges that it has marketed MARLBORO trademark since 1883. The Panel concludes that it is unlikely that the Respondent, having registered the Disputed Domain Name which includes the MARLBORO trademark in its entirety, could not be aware of the Complainant, its business and its MARLBORO trademark.

Secondly, the registration of the Disputed Domain Name that is confusingly similar to the well-known MARLBORO trademark by a natural person who has no relation to the mark suggests bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 ("VEUVECLICQUOT.ORG" is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith"). By accessing the Disputed Domain Name, individuals would likely believe that the Disputed Domain Name is either related to or associated with the Complainant and the Complainant's products. Reproduction of a world-fame trademark in the Disputed Domain Name for the purpose of attracting the users to an inactive website cannot be considered as fair use or use in good faith. Based on the above, the Panel concludes that the Respondent has registered the Disputed Domain Name with the intent to target the goodwill and reputation of the Complainant's well-known trademark.

The Panel finds that the Respondent's awareness of the Complainant's MARLBORO trademark is obvious, given the trademark's global renown and that the Respondent combined the Complainant's trademark with term "company" (company which may be engaged in manufacture and sale of cigarettes under MARLBORO trademark).

Moreover, the Panel agrees with the Complainant's contention that privacy shield service was used by the Respondent in this case, which also supports a finding of the Respondent's bad faith.

Accordingly, the Panel concludes that the third element of the Policy has been met.

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, <marlboro-company.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: March 12, 2018