WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Janet C Lundy

Case No. D2018-1249

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA” or “US”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Janet C Lundy of Wysox, Pennsylvania, USA.

2. The Domain Names and Registrar

The disputed domain names <marlboromerah-1.com>, <marlboromerah-2.com>, <marlboromerah-3.com>, <marlboromerah-4.com>, and <marlboromerah-5.com> (the “Domain Names”) are registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 12, 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 is a business corporation organized under Virginia law and headquartered in the Commonwealth of Virginia, USA. Altria Group, Inc., the Complainant’s parent company, is a publicly traded corporation listed on the New York Stock Exchange. According to the parent company’s website at “www.altria.com”, the Complainant has been the largest US tobacco manufacturer for more than 30 years, and Marlboro is one of its leading brands.

The Complainant or its predecessors have sold cigarettes under the MARLBORO trademark since 1883. The Complainant holds US Trademark Registration Number 68,502 for MARLBORO as a standard character mark (registered April 14, 1908). The Complainant operates a website at “www.marlboro.com”. Given the long history of advertising, media articles, sports sponsorships, and successful sales associated with the trademark, several UDRP panels have concluded that MARLBORO is a famous mark in the US. See, e.g., Philip Morris USA Inc. v. Branden Marks, WIPO Case No. D2017-0349.

The Domain Names were all registered on January 15, 2018 in the name of a domain privacy service. After receiving notice of this dispute, the Registrar identified the underlying registrant as the Respondent, an individual residing in Wysox, Pennsylvania, USA. The Respondent has not replied to communications from the Complainant or the Center.

At the time of the filing of the Complaint and this decision, none of the Domain Names resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are confusingly similar to its registered and world-famous MARLBORO mark, which the Respondent does not have permission to use and in which it has no evident rights or legitimate interests. The Domain Names do not avoid confusion by adding the generic string “merah” (“red” in the Indonesian and Malay languages, the color used in some of the MARLBORO design trademarks) and a numeral.

The Complainant relies on the “passive use” doctrine first articulated in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, to infer bad faith despite the lack of an active website associated to date with the Domain Names, as the selection of domain names so obviously based on a very well-known trademark strongly suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). The Complainant argues that the inference of bad faith is consistent with the Respondent’s conduct in using a domain privacy service and registering multiple infringing Domain Names, which the Complainant views as an attempt to foreclose the Complainant from using its own trademark, citing the Policy, paragraph 4(b)(ii).

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 divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The Complainant has produced clear evidence that it holds registered MARLBORO trademarks. The Domain Names each incorporate this mark in its entirety and add “merah” (“red” in Indonesian and Malay), followed by a hyphen and a number. The Panel does not find that these additions avoid confusing similarity with the Complainant’s mark.

The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel concludes under this test that the Domain Names are confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

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

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 3.0, section 2.1.

Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies any association with the Respondent. The Respondent has not come forward to assert any rights or legitimate interests in the Domain Names, and none are evident from the Domain Names themselves or from any use of the Domain Names. The Panel concludes, therefore, that the second element of the Complaint has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. Relevantly, the Complainant cites one of these illustrations:

“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct …”

While the Respondent is not known to have a history of cybersquatting, the Respondent recently registered five Domain Names incorporating the MARLBORO mark with a mixture of languages and numbers, which does evidence a pattern of trademark-abusive domain name registration, even if the Complainant has long employed domain names that are more concise and convenient, including <marlboro.com>.

More to the point, the Complainant infers bad faith from the Respondent’s registration of Domain Names based on a well-known and long established trademark to which the Respondent has no legitimate claim, masking the Respondent’s identity behind a domain privacy service and making no active use of the Domain Names to date. The Complainant relies on the “passive holding” doctrine that infers bad faith from the lack of plausible alternative reasons for a silent respondent to have registered and maintained domain names that are based on a well-known and distinctive trademark other than, ultimately, to exploit the mark. See WIPO Overview 3.0, section 3.3.

That reasoning is persuasive in this instance, because it is hard to imagine what legitimate reason the Respondent could have for registering the Domain Names incorporating the Complainant’s well-known mark and adding the word for “red” in languages spoken by hundreds of millions of people. In fact, the confusion between the Domain Names and the Complainant’s trademark is heightened in those markets because the color red is an integral part of several of the Complainant’s design trademarks, and the Complainant advertises some of its products as “Marlboro Red” or “Marlboro Red Label”. While there are many possible reasons for using a domain privacy service, the Respondent’s failure to reply to communications from the Complainant or the Center concerning the allegations of Policy violations further supports the inference that in this case there is no good faith motivation for registering and holding the Domain Names.

The Panel concludes on this record that the third element of the Complaint, bad faith, has been established.

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 Domain Names, <marlboromerah-1.com>, <marlboromerah-2.com>, <marlboromerah-3.com>, <marlboromerah-4.com>, and <marlboromerah-5.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: July 26, 2018