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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Julian Jeyabalan

Case No. D2012-1637

1. The Parties

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

Respondent is Julian Jeyabalan of Alpharetta, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <emarlboros.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2012, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2012.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on September 19, 2012. 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 owns a trademark registration for its MARLBORO mark, which it has used in connection with the sale of cigarettes since at least 1908. Complainant operates a website at “www.marlboro.com”.

Respondent registered the disputed domain name <emarlboro.com> in December of 2011 and uses it to provide links to other websites, some of which provide smoking-related items for sale.

5. Parties’ Contentions

A. Complainant states the following:

1. Respondent’s disputed domain name <emarlboro.com> is confusingly similar to Complainant’s MARLBORO mark.

2. Respondent does not have any rights or legitimate interests in the disputed domain name <emarlboro.com>.

3. Respondent registered and uses the disputed domain name <emarlboro.com> in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in its MARLBORO mark under Policy paragraph 4(a)(i) through its trademark registration with the United States Patent and Trademark Office (“USPTO”), dating back to 1908. See Trip Network Inc. d/b/a cheap Tickets v. Sigfredo Alviera, NAF Claim No. 914943 (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy paragraph 4(a)(i)).

Respondent’s disputed domain name <emarlboro.com> is confusingly similar to Complainant’s MARLBORO mark. Respondent simply adds the letter “e” and the gTLD “.com” to Complainant’s well-known mark, which does not distinguish the disputed domain name from its mark. See T.R. World Gym-IP, LLC v. D’Addio, NAF Claim No. 956501 (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy 4(a)(i)). In Trip Network Inc. v. Alviera, Supra, the panel found that the addition of a gTLD is irrelevant to a Policy 4(a)(i) determination. Thus, the Panel finds that Respondent’s disputed domain name <emarlboro.com> is confusingly similar to Complainant’s MARLBORO mark.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, NAD Claim No. 741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, NAF Claim No. 780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant states that Respondent is not licensed or otherwise authorized to use the MARLBORO mark. The WhoIs record for the disputed domain name <emarlboro.com> lists “Julian Jeyabalan” as the disputed domain name registrant, which is not similar to the disputed domain name. In Braun Corp. v. Loney, NAF Claim No. 699652, the Panel held that such things as authorization to use a mark and the WhoIs information are illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name <emarlboro.com> pursuant to Policy 4(c)(ii).

Complainant argues that Respondent could not make any legitimate use of the disputed domain name when it clearly trades off the value of Complainant’s long-standing, well-known MARLBORO mark. The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy 4(c)(i). See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel found that a respondent that chooses a domain name incorporating a well-known trademark, to create an impression of an association with complainant, has no legitimate interest in the mark.

Complainant argues further that Respondent’s assertion, outside of this proceeding, that it uses the disputed domain name <emarlboro.com> to provide “education on Marlboros” is not bona fide. The Panel agrees due to evidence showing Respondent’s commercial use in competition with Complainant. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 where the panel found that an alleged “free speech” purpose was merely a pretext for commercial advantage. Therefore, the Panel finds that Respondent’s use of the disputed domain name <emarlboro.com> is not a Policy 4(c)(iii) legitimate noncommercial use.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Respondent registered and uses the disputed domain name <emarlboro.com> to provide links to other websites, some of which provide smoking-related items for sale. Respondent chose a domain name incorporating Complainant’s mark to cause confusion as to Complainant’s possible sponsorship of or affiliation with the links offered at the disputed domain name. The Panel finds that Respondent uses the disputed domain names to divert Internet users from Complainant’s website to the disputed domain name in order to take commercial advantage of the likelihood of confusion created. Therefore, the Panel finds that Respondent registered and is using the disputed domain name <emarlboro.com> in bad faith under Policy 4(b)(iv). See AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091 (finding bad faith under Policy, paragraph 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

Complainant also argues that Respondent had actual knowledge of Complainant’s rights in its MARLBORO mark based on the fame of the mark. The Panel agrees and finds that this to be further evidence of bad faith pursuant to Policy 4(a)(iii). See Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609, where the panel came to the same conclusion.

Finally, Respondent made various attempts to sell the disputed domain name to Complainant, which constitutes additional evidence of bad faith under Policy 4(b)(i). See Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790 (finding registrant’s bad faith demonstrated by offer to sell disputed domain name to Complainant).

The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(iii).

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 <emarlboros.com> be transferred to Complainant.

Sandra J. Franklin
Sole Panelist
Dated: September 26, 2012

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