Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“US”), represented by Arnold & Porter, US.
Respondent is Garib Karapetyan of Sacramento, California, US.
The disputed domain name <marijuanamarlboros.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2014. On October 21, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 22, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2014. The Center received an informal e-mail communication from Respondent on November 10, 2014. Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on November 19, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 24, 2014. 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.
Complainant has manufactured and sold cigarettes under the famous trademark MARLBORO for many decades. Complainant has long held numerous registrations of the MARLBORO mark, including registration 68,502 with the United States Patent & Trademark Office, which dates back to 1908. There is no doubt that MARLBORO, as a source identifier for Complainant’s tobacco products, is one of the most famous trademarks in the world. Since 2000, Complainant has owned and operated the domain name <marlboro.com> to carry on its business and branding efforts via the Internet.
Respondent registered the Domain Name on June 11, 2014. The Domain Name is currently parked at a website apparently established by the Registrar. This parking page contains a series of commercial hyperlinks, as well as a link asking the reader “Would you like to buy this domain?”
Complainant contends that it has satisfied all three elements under the Policy required for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
There is no question that Complainant holds rights in the famous mark MARLBORO. The Domain Name incorporates that famous mark in its entirety, pluralizes it, and prefaces the mark with the generic word “marijuana.” In the Panel’s view, the pluralization of MARLBORO is of no consequence. Further, in the Panel’s view, the addition of the word “marijuana” does little to diminish the confusing similarity between the mark and the Domain Name. Given the fame of the mark and its close association with products that are smoked, the word “marijuana” may aggravate consumer confusion by suggesting that Complainant is now in the business of marketing marijuana cigarettes under the MARLBORO mark.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been established.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
It is undisputed that Respondent has not been authorized by Complainant to use its MARLBORO mark as a domain name or otherwise. The Panel also finds that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Indeed, Respondent has not come forward with any explanation or attempt to establish its bona fides vis-à-vis the Domain Name.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv). The Panel concludes, on a balance of probabilities, that Respondent had Complainant’s famous MARLBORO mark in mind when registering the Domain Name. The Panel further finds bad faith use under the Policy. Complainant alleges, and Respondent does not dispute, that Respondent derives click-through revenues from the hyperlinks placed on the parking page to which the Domain Name resolves. Such conduct has been held to be bad faith use in other cases under the Policy. See, e.g., CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marijuanamarlboros.com> be transferred to Complainant.
Robert A. Badgley
Date: November 25, 2014