WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Jesse Beck

Case No. D2013-1087

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 Jesse Beck of Broomfield, United States of America.

2. The Domain Name and Registrar

The disputed domain name <teammarlboro.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, 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 June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. The Response was first filed with the Center on July 10, 2013. Complainant filed a Reply on July 12, 2013 to which Respondent replied on July 12 and 13, 2013.

The Center appointed Gary J. Nelson as the sole panelist in this matter on August 2, 2013. 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 is the owner of at least two United States trademark registrations for MARLBORO. Specifically, Complainant owns at least the following trademark registrations in the United States:

Country

Registration No.

Mark

Classes

Dates of Application and Registration

United States

0068502

MARLBORO

017

October 17, 1907

April 14, 1908

United States

0938510

MARLBORO and Design [Red Roof]

017

March 30, 1971

July 25, 1972

The disputed domain name <teammarlboro.com> appears to have been registered on April 12, 2011.

Internet users attempting to access the website corresponding to the disputed domain name <teammarlboro.com> are diverted to Respondent's website at “www.jessebeck.com”.

In or about March 2011, Respondent won a contest sponsored by Complainant. The contest was entitled
“Team Marlboro”. Subsequent to winning the contest, Respondent registered the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant has exclusive rights in its MARLBORO trademark relative to the disputed domain name.

The disputed domain name is confusingly similar to Complainant’s MARLBORO trademark.

Respondent has no legitimate interest or right in the disputed domain name.

Respondent registered and is using the contested domain name in bad faith.

Complainant manufactures, markets and sells cigarettes in the United States under the MARLBORO trademark. Complainant contends its MARLBORO trademark is famous and well known throughout the world.

MARLBORO branded cigarettes have been sold by Complainant (and various predecessor entities) since 1883. Complainant has sold tobacco and smoking-related products under its MARLBORO trademark for decades.

Complainant is the owner of registered MARLBORO trademarks in the United States for cigarettes.

Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademark throughout the United States and has developed substantial goodwill in the MARLBORO trademark.

Complainant is the owner of the domain name <marlboro.com> which links to a website that provides information regarding MARLBORO branded products, along with special offers to age-verified adult smokers 21 years of age or older.

The disputed domain name <teammarlboro.com> resolves to a website associated with the domain name <jessebeck.com>”, which displays biographical information about Respondent, including photographs of Mr. Beck.

Complainant sent Mr. Beck a Cease and Desist letter on May 22, 2013 demanding that he voluntarily transfer ownership of the disputed domain name to Complainant. No response was received from Mr. Beck.

B. Respondent

Respondent admits that Complainant has rights to one of the words in the disputed domain name.

Respondent was a participant in the first “Team Marlboro” contest and was chosen as a winner of that contest.

After being chosen as a winner of the “Team Marlboro” contest, Respondent registered the disputed domain name <teammarlboro.com> with the intent of blogging about his adventures and to later morph the corresponding website into a website that would share pictures with all of the other contest winners. The website was never fully developed and never achieved the initial goals existing at the time the disputed domain name was registered.

The winning of the first “Team Marlboro” contest by Respondent, and the registration of the disputed domain name <teammarlboro.com> with the intent to blog about his experience and/or share personal photographs, is a legitimate noncommercial or fair use of the disputed domain name <teammarlboro.com>.

Respondent had no intent of seeking commercial gains or tarnishing Complainant’s MARLBORO trademark when he registered the disputed domain name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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.”

This Decision is being issued based on the Complaint submitted by Complainant, the Response submitted by Respondent, the Reply filed by Complainant, and the Sur-Reply filed by Respondent.

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:

(i) The disputed 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 the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns prior rights in the MARLBORO trademark and the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark.

Complainant owns at least two MARLBORO trademark registrations in the United States. The relevant priority date for both of these registrations precede the date upon which the disputed domain name was registered (i.e., April 12, 2011).

Accordingly, Complainant has established rights in its MARLBORO trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity).

The disputed domain name <teammarlboro.com> is confusingly similar to Complainant’s MARLBORO trademark because the disputed domain name incorporates the entirety of Complainant’s MARLBORO trademark and merely adds a generic descriptive term immediately in front of the MARLBORO mark (i.e., “team”), and the generic Top-Level Domain (“gTLD”) “.com”.

Neither the addition of a purely descriptive term to a well-known mark nor the addition of a gTLD is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to Complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “team”) has been used by Complainant in association with the promotion and/or advertisement of its “Team Marlboro” contest. See Diageo Brands B.V., Diageo N. Am., Inc. and United Distillers Mfg. v. iVodka.com aka Alec Bargman, WIPO Case No. D2004-0627 (finding <tanqueraysterling.com> confusingly similar to TANQUERAY STERLING vodka, which Complainant produced and marketed).

Also, in its Response, Respondent makes the following comment when addressing the issue of confusing similarity:

“[n]ot much argument here. The complainant clearly has rights to one of the words in the domain name. My basis for refuting the transfer is mostly in points B and C below.”

Based on this statement, the Panel concludes that Respondent has admitted that the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name <teammarlboro.com>.

Respondent has no formal connection or affiliation with Complainant, or any of its products branded with the MARLBORO trademark. Respondent is not known by either term “team” or “Marlboro”, (or any combination thereof) and has not received a license or authorization to use the MARLBORO trademark. Further, Respondent admits that it chose to register the disputed domain name after participating in a Complainant sponsored contest operated under the name “Team Marlboro”.

The mere registration of a domain name does not create rights or a legitimate interest in a specific domain name. See Pharmacia & Upjohn Co. v. Moreonline, WIPO Case No. D2000-0134 (“mere registration does not establish rights or legitimate interests in the disputed domain name”).

The Complainant correcting argues that the prize for winning Complainant’s “Team Marlboro” contest did not include the right to use the MARLBORO trademark and that “an avowed fan does not have a legitimate right to misappropriate another’s trademark for a product or service into his or her domain name”. See Himalaya Global Holdings Ltd. v. Niyaz Khan, WIPO Case No. D2010-1583 (“claimed love of a product does not necessarily give the Respondent the right to register and hold a domain name that is identical or confusingly similar to the mark of the product brand. A product fan can choose many other descriptive names to form its domain name, but it is inappropriate to directly take the trademark name”).

Here, Respondent has redirected the website linked to the disputed domain name <teammarlboro.com> to the website “www.jessebeck.com” which, among other descriptive information, advertises Respondent’s consulting business while not mentioning the fact Respondent was a winner of the Complainant sponsored “Team Marlboro” contest. Such activity is further indication that Respondent does not have a right or a legitimate interest in the disputed domain name. See Chanel, Inc. v. Estco Tech Grp., WIPO Case No. D2000-0413 (“[w]hile it might be fair use for [a] respondent to mention [the complainant’s mark] in giving out information to the public”, a respondent cannot use a "famous trademark to attract the public to the website”).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

Respondent admits he chose the disputed domain name with full knowledge of Complainant’s rights in the MARLBORO trademark. Respondent’s awareness of Complainant’s MARLBORO trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

Respondent alleges that after being chosen as a winner of the “Team Marlboro” contest, he registered the disputed domain name <teammarlboro.com> with the intent of blogging about his adventures and to later morph the corresponding website into a website that would share pictures with all of the other contest winners. However, as indicated above, Respondent has redirected the website linked to the disputed domain name <teammarlboro.com> to the website “www.jessebeck.com” which, among other descriptive information, advertises Respondent’s consulting business while not mentioning the fact Respondent was a winner of the Complainant sponsored “Team Marlboro” contest.

Respondent admits that he has not updated the website linked to the disputed domain name <teammarlboro.com> in six years. The Panel finds that this is the equivalent of holding the disputed domain name without having rights or legitimate interests. Given the circumstances of this case, the Panel finds that regardless of what has been alleged by Respondent, this constitutes evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766 (finding that respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).

The Panel therefore finds that Complainant has proven the requirement of 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, <teammarlboro.com>, be transferred to the Complainant.

Gary J. Nelson
Sole Panelist
Date: August 15, 2013