WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Sam Hamdan
Case No. D2014-0180
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (the “USA”), represented by Arnold & Porter, USA.
Respondent is Sam Hamdan of New York, New York, USA.
2. The Domain Name and Registrar
The disputed domain name <offmarlboro.com> (the “Disputed Domain Name”) 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 February 5, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2014, 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. In response to a notification by the Center that the Complaint was inconsistent regarding the Registrar with whom the Disputed Domain Name was registered, the Complainant filed an amendment to the Complaint on February 12, 2014.
The Center verified that the Complaint together with the amendment to 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 February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. Respondent did not submit any formal Response. Respondent sent an informal email communication on March 11, 2014, requesting an extension to file a Response, without specifying any special circumstances for such request. Complainant did not submit any comments in this respect and on March 17, 2014 the Center denied Respondent’s request for an extension and proceeded with the Panel appointment process.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 26, 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.
4. Factual Background
Complainant in this proceeding is Philip Morris USA, a corporation organized and existing under the laws of the Commonwealth of Virginia. Philip Morris USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its MARLBORO trademarks. Marlboro cigarettes have been made and sold by Philip Morris USA (and various predecessor entities) since 1883. Complainant operates a website whose domain name incorporates the MARLBORO Mark, <marlboro.com>. Complainant has provided printouts of the home page of the its website and the WhoIs record for the <marlboro.com> domain name in Annex D.
The Panel accepts the Complainant’s MARLBORO Marks are well known. Many previous UDRP panels have found the same. See, e.g., Philip Morris USA Inc. v.ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. Private, WIPO Case No. D2005-0790; Philip Morris USA Inc. v. Cooltobacco.com akaIgor Rodionov, WIPO Case No. D2005-0245; Philip Morris USA Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171.
Respondent is Sam Hamdan of New York, New York. The Disputed Domain Name <offmarlboro.com> was registered on July 22, 2013. The Disputed Domain Name resolves to a website listing links to a number of online discount sales at a variety of websites including discount coupons, jewelry, and airfare. A printout of the homepage of the webpage was attached to the Complaint as Annex E.
5. Parties’ Contentions
The Disputed Domain Name is confusingly similar to Complainant’s MARLBORO Marks. Respondent has no legal rights to or legitimate interests in the Disputed Domain Names. Respondent registered and is using the Disputed Domain Name in bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. See Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondents. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i.) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii.) the 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.
A. Identical or Confusingly Similar
To prove this element, Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to Complainant’s trademark.
It is clear that Complainant has rights in the MARLBORO Marks and that the MARLBORO Marks are distinctive and famous and well-known by the public. The record shows Complainant owned trademark rights in the MARLBORO Marks long before the Disputed Domain Name registration in July, 2013. The Disputed Domain Name incorporates the MARLBORO Mark in its entirety. “[…] in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Limited. v. One Star Global LLC, WIPO Case No. D2009-0227.
The Disputed Domain Name <offmarlboro.com> simply adds the term “off” to Complainant’s MARLBORO Mark. Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that it was chosen with Complainant’s Marks in mind. (Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., Case No. D2010-2181.) Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. The combination of Complainant’s MARLBORO Mark with the word “off” is insufficient to distinguish Respondent’s domain name from Complainant’s mark because the dominant portion of the Disputed Domain Name is actually Complainant’s MARLBORO Mark. See Skype Limited v. Xiaochu Li, WIPO Case No. D2005-0996.
It is therefore likely that consumers would be confused by the use of the trademark in the Disputed Domain Name. In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the term “Marlboro”. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d. d. v. WACHEM do.o. WIPO Case No. D2004-0110. The Panel finds that Complainant has successfully presented a prima facie case which Respondent has not rebutted. The Respondent has filed no response. Without a response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the Disputed Domain Name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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”.
Complainant submits that there is no doubt that Respondent was aware of Complainant’s rights in the MARLBORO Marks, and that Respondent registered the Disputed Domain Name in bad faith by doing so with full knowledge of Complainant’s rights in the MARLBORO Marks. Given the fame of Complainant’s Marks, as discussed above, the Panel concurs.
Complainant further submits upon information and belief, that Respondent is using the Disputed Domain Name in bad faith by attempting to trade on the goodwill of the MARLBORO Marks by obtaining revenue from the pay-per-click advertisements. Pay-per-click websites generate revenue by offering links and when an Internet user clicks on these links, the entity sponsoring that link will make a payment to the site owner. Generating revenue from domain name parking activities is bad faith use where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page. (Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699; “Dr. Martens” International Trading GmbH. and “Dr. Maertens” Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1191). As already discussed, Respondent is using the Disputed Domain Name to attempt to trade on the goodwill of Complainant. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
Accordingly, the Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy 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 disputed domain name <offmarlboro.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: April 9, 2014