WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. kenny

Case No. D2011-0309

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is kenny of Putian, Fujian, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <cheap-marlborocigarettes.com> and <marlborocigarettesonline.com> are registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 16, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On February 17, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On February 18, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 19, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center has verified that the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 20, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on March 21, 2011.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 30, 2011. 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

A. Complainant

The Complainant is a company incorporated in the United States and the owner of word and device trade mark registrations in the United States for the trade mark MARLBORO (the “Trade Marks”).

B. Respondent

The Respondent is an individual apparently with an address in the People’s Republic of China.

The disputed domain names were registered on September 30, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant manufactures, markets, and sells in the United States cigarettes, including cigarettes under the Trade Marks. Marlboro cigarettes have been made and sold by the Complainant and its predecessors since 1883, with the modern history of the brand beginning in 1955.

The Complainant has spent substantial time, effort, and money advertising and promoting the Trade Marks throughout the United States, and the Complainant has thus developed substantial goodwill in the Trade Marks. Through such widespread efforts, the Trade Marks have become distinctive and are uniquely associated with the Complainant and its products in the United States. Numerous UDRP panels have determined that the Trade Marks are famous throughout the United States and the world.

The disputed domain names resolve to websites (the “Infringing Websites”) which display and offer for sale numerous cigarette products bearing the Trade Marks and also the trade marks of the Complainant’s affiliate, Trademarks LLC, including Benson & Hedges, Virginia Slims, Parliament, L&M and Chesterfield. Some or all of these cigarettes are counterfeit and are not manufactured by the Complainant.

The Complainant has purchased and inspected the cigarettes offered for sale under the Trade Marks from the Respondent’s “www.marlborocigarettesonline.com” and has conclusively determined that such products are counterfeit.

The Respondent identifies himself as a “professional manufacturer of marlboro cigarettes” on the Respondent’s “www.cheap-marlborocigarettes.com” website. The Complainant does not manufacture in China the particular version of cigarettes that the Respondent claims to manufacture.

The disputed domain names are confusingly similar to the Trade Marks. The Respondent’s addition of the generic terms “cheap”, “cigarettes” and “online” does nothing to distinguish the disputed domain names from the Trade Marks.

The Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Infringing Websites, by creating confusion with the Trade Marks.

The disputed domain names are so obviously indicative of the Complainant’s products that the Respondent’s use of these domain names would inevitably lead to confusion of some sort.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) The Complainant neither resides in nor is registered in China and is unfamiliar with the Chinese language;

(2) Although the Respondent purportedly resides in China, it clearly is familiar with and conversant in the English language. The language of the Infringing Websites is English, evidencing the Respondent’s level of comfort with the English language;

(3) The host of the Infringing Websites is Bluehost Inc. (“Bluehost”), a company headquartered in Utah, United States and without any apparent capacity to provide technical support in any language other than English, including the Chinese language;

(4) The language of Bluehost’s Terms of Use is English;

(5) The disputed domain names include the (English language) Trade Marks paired with English words;

(6) The Complainant would incur significant expense and difficulty in translating the Complaint into Chinese. Translating the Complaint and correspondence between the Registry and the parties would invariably lead to unnecessary delay.

The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).

In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many decades the dates of registration of the disputed domain names. The Complainant has not filed any direct evidence of its rights in the Trade Marks outside of the United States, but it is trite that in UDRP proceedings complainants need not necessarily provide evidence of their trade mark rights in the jurisdiction in which the respondent is (or appears to be) based. This is even more so in cases such as this where the Respondent has failed to file a Response. In any event, the Complainant has referred in the Complaint to several previous UDRP decisions in which it has been held that the Trade Marks are well-known marks in the United States and worldwide.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

In the present case, the Panel concludes that the addition of the non-distinctive words “cigarettes”, “cheap” and “online” - the first word being descriptive of the Complainant’s products, and the latter two being words frequently used in retailing and marketing of branded goods - does not serve to distinguish the disputed domain names from the Trade Marks in any way.

Similarly, the addition of a hyphen to the first of the disputed domain names does not serve to distinguish the first disputed domain name from the Trade Marks.

The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:

(i) before any notice to you 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 (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you 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 trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has submitted compelling evidence that the Infringing Websites are used by the Respondent to market counterfeit goods. This evidence includes (1) purchasing and inspecting Marlboro cigarettes from one of the Infringing Websites; and (2) the assertion on the other of the Infringing Websites that the Respondent (or the operator of the website) is a manufacturer of the Complainant’s cigarettes in China, when in fact the Complainant does not manufacture its Marlboro cigarettes in China. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant has submitted compelling evidence to suggest that the disputed domain names have been used to offer for sale counterfeit products under the Trade Marks via the Infringing Websites. This is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <cheap-marlborocigarettes.com> and <marlborocigarettesonline.com> be transferred to the Complainant.

Sebastian Hughes
Sole Panelist
Dated: April 7, 2011