WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Jacob Bettis
Case No. D2014-0837
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“U.S.”) represented by Arnold & Porter, U.S.
Respondent is Jacob Bettis of San Pedro, California, U.S.
2. The Domain Name and Registrar
The disputed domain name <marlborovapors.com> (the “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 May 20, 2014. On May 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2014.
The Center appointed Bruce E. O’Connor as the sole panelist in this matter on July 8, 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 manufactures, markets, and sells in the U.S. cigarettes, including cigarettes under its famous MARLBORO trademark. Marlboro cigarettes have been made and sold by Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
The MARLBORO trademark (the “Trademark”) is protected by various U.S. Trademark Registrations, including Registration No. 68,502 issued April 14, 1908.
Complainant has spent substantial time, effort, and money advertising and promoting the Trademark throughout the U.S., and Complainant has thus developed substantial goodwill in the Trademark. Through such widespread, extensive efforts, the Trademark has become distinctive and is uniquely associated with Complainant and its products. Indeed, numerous UDRP panels already have determined that the Trademark is famous. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (Sept. 17, 2013) (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”).
Through widespread, extensive use in connection with its products, the Trademark has become uniquely associated with Complainant and its products, and is well known and famous throughout the U.S. Complainant’s registrations establish that it has rights in the Trademark.
The Domain Name was registered on November 22, 2013, and is being used as a parking page that prominently displays the logo of the Registrar, GoDaddy.com. The web site includes multiple links to third-party products.
5. Parties’ Contentions
The Domain Name is confusingly similar to the Trademark. Numerous panels have held that domain names are confusingly similar to a trademark where, as here, the domain names incorporate the mark in its entirety.
Indeed, Respondent’s use of “vapors” in connection with Complainant’s Trademark merely exacerbates this confusion. This term is a well-known reference for electronic cigarettes, which are designed to provide an alternative to traditional cigarettes. Thus, the public, seeing the Domain Name, may be misled into believing that Complainant is manufacturing and selling an electronic cigarette under the Trademark.
Further, the addition of a generic Top-Level Domain (“gTLD”) name such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a protected mark.
Respondent has no rights or legitimate interests in the disputed Domain Name. Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the Trademark. Respondent was never known by any name or trade name that incorporates the word “Marlboro.” On information and belief, Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed could never do so given Complainant’s pre-existing and exclusive rights to this mark throughout the U.S. Respondent has not received any license, authorization, or consent — express or implied — to use the Trademark in a domain name or in any other manner, either at the time when Respondent registered and began using the Domain Name, or at any other time since. In addition, the WhoIs record associated with the Domain Name does not identify Respondent as “marlborovapors.com”.
Respondent’s misappropriation of the Trademark by inclusion in the Domain Name is no accident. Clearly, Respondent chose to use this trademark to draw Internet users to his web sites by capitalizing on the association of the Trademark with Complainant’s tobacco products. Rather, Respondent’s objective at the outset was to divert Internet users seeking to visit Complainant’s legitimate web site to Respondent’s directory web sites. Such misappropriation of the Trademark does not give rise to a right or legitimate interest but portends Respondent’s bad faith.
Respondent has registered the Domain Name in bad faith by doing so with full knowledge of Complainant’s rights in the Trademark. Respondent has combined “marlboro” with terms designed to appeal to Complainant’s consumers.
A simple Internet search would have revealed Complainant’s extensive use of the Trademark as a source identifier for its tobacco products. Complainant’s rights in the Trademark would also have been obvious through basic domain name searches, Internet searches, and searches of the trademark records that are readily accessible online.
Respondent is also deemed to have constructive notice of Complainant’s trademark rights by virtue of Complainant’s federal registrations for the Trademark.
It is well settled that Respondent’s very method — using the exact Trademark to lure adult smokers to his web site — demonstrates bad faith use under the Policy.
In addition, upon information and belief, Respondent registered the Domain Name to trade on the goodwill of the Trademark by obtaining revenue from the pay-per-click (“PPC”) advertisements displayed on the web site. This is evidence of bad faith.
Finally, Respondent must have expected that any use of the Domain Name would cause harm to Complainant. The Domain Name evokes alternatives to Complainant’s MARLBORO® products such that Respondent’s use of the Domain Name would inevitably lead to confusion of some sort.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In view of Respondent’s failure to submit a response, the Panel will decide this 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.
A. Identical or Confusingly Similar
Complainant has established rights in the Trademark, by reason of its registration cited above.
The Domain Name differs from the Trademark only by the addition of the term “vapors” and the gTLD “.com”. These differences do not distinguish the Domain Name. The term “vapors” is closely linked with cigarettes in that it is descriptive of cigarette smoke. And Complainant has pointed out that the term “vapors” is now a reference to electronic cigarettes. Finally, it is well established that the addition of a gTLD does not distinguish a domain name from a trademark.
The Panel finds that the Domain Name is confusingly similar to the Trademark, and that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the respondent’s 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 and services; or
(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is 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.
The Panel finds that Complainant has made a prima facie showing that Respondent does not come under those circumstances.
There is no evidence that Respondent is or has been known by the Domain Name, or that Respondent is making a noncommercial or fair use of the Domain Name.
Notice of this dispute occurred on June 21, 2013, the date upon which this proceeding was instituted. This date is more than a century subsequent to Complainant’s first use of the Trademark and the effective date of Complainant’s rights in the Trademark. Prior to notice, the only evidence of use is Respondent’s web site to which the Domain Name resolves. In the absence of any evidence from Respondent, the minimal parking page at that web site, dominated by the logo of the Registrar, is insufficient to show any use or demonstrable preparations to use the Domain Name in conjunction with a bona fide offering of goods or services1 .
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 that 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 web site 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 web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy, paragraph 4(b), or otherwise, Complainant must establish that Respondent intentionally registeredandused the Domain Name in bad faith as provided under the Policy. And, Respondent must have known or should have known of the Trademark.
Lack of rights or legitimate interests under Policy, paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy, paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) requires evidence of bad faith by Respondent.
The Panel agrees with the panel in Philip Morris USA Inc. v. ICS Inc., supra that the Trademark is famous. Such notoriety makes it inconceivable that Respondent did not know of the Trademark at the time of registration of the Domain Name. Respondent’s knowledge of the Trademark also is evident in view of its choice of the term “vapors”, which is descriptive of a characteristic of Complainant’s tobacco products,2 to follow the Trademark in the Domain Name.3 And, the PPC parking page of Respondent’s web site does not dispel the unwarranted association with Complainant’s famous trademark that comes from this combination. Finally, Respondent has not responded to the Complaint. The Panel must conclude that Respondent both registered and used the Domain Name with the specific intent of capitalizing on likelihood of confusion with the Trademark in order to attract users to Respondent’s web site.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
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, <marlborovapors.com>, be transferred to Complainant.
Bruce E. O’Connor
Date: July 21, 2014
1 Further, Respondent’s implied knowledge of the Trademark (that follows from the constructive notice of 15 U.S.C. §1057(c) applicable to an U.S. registered trademark), is another factor establishing Respondent’s lack of bona fide use, in that both Complainant and Respondent are from the U.S..
2 Complainant also contends that the term “vapors”, as now associated with electronic cigarettes, is descriptive of tobacco products.
3 The Panel does not need to address Complainant’s contention that the constructive notice afforded the Trademark through its U.S. trademark registration can satisfy the requirement of knowledge necessary to sustain a finding of bad faith registration or use under the third element of the Policy.