WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Admin Contact, PrivateName Services Inc. / Johnny Boubli

Case No. D2014-0861

1. The Parties

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

The Respondent is Admin Contact, PrivateName Services Inc. of Vancouver, British Colombia, Canada and Johnny Boubli of Paris, France.

2. The Domain Names and Registrar

The disputed domain names <e-cig-marlboro.com>, <e-cig-marlborolight.com>, <ecigmarlborolight.com>, <e-liquide-marlboro.com>, <eliquidemarlboro.com>, <eliquidemarlborogold.com>, <e-liquid-marlboro.com> and <eliquidmarlboro.com> are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 10, 2014.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 4, 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

The Complainant is the owner, amongst others, of the following trademark registrations:

- United States of America Trademark registration No. 68,502 for MARLBORO registered on April 14, 1908 and successively renewed; and

- United States of America Trademark registration No. 938,510 for MARLBORO and Red Roof Design registered on July 25, 1972 and successively.

All the disputed domain names <e-cig-marlboro.com>, <e-cig-marlborolight.com>, <ecigmarlborolight.com>, <e-liquide-marlboro.com>, <eliquidemarlboro.com>, <eliquidemarlborogold.com>, <e-liquid-marlboro.com> and <eliquidmarlboro.com> were registered on the same date, November 25, 2013. Currently no active websites resolve from the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is the owner of the famous trademark MARLBORO, which it and its predecessors have been using since 1883 in connection with tobacco and smoking-related products, having established considerable goodwill in said mark throughout the United States of America and the world.

The Complainant further asserts that all of the disputed domain names incorporate entirely its famous trademark, what could suggest to Internet users that the pages relating to the disputed domain names would be official or authorized pages of the Complainant. The addition of the expressions “e-cig” or “eliquid” in connection with its trademark merely exacerbate such confusion given that such terms refer to an alternative to traditional cigarettes and to a component of electronic cigarettes, respectively.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:

(i) the Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the products provided by the Complainant;

(ii) the Respondent was never known (as an individual, business or other organization) by the disputed domain names;

(iii) the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark in the disputed domain names or in any other manner;

(iv) the Respondent is making no use of the disputed domain names; and

(v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

Furthermore, the Complainant asserts that the bad faith of the Respondent is evident in view of both the high number of infringing domain names he registered, as well as to the fact that all of them incorporate its famous trademark and relate to cigarettes or tobacco related products.

Lastly, the Complainant concludes that the use of identity-shielding services by the Respondent is a further indicator of his bad faith given that such service was used in an attempt to prevent him from being held accountable for his registration and use of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered or are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(i) of the Policy.

In accordance with paragraph 14 of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the famous MARLBORO trademark, duly registered in the United States of America.

The Complainant’s trademark is entirely reproduced in the disputed domain names and the addition of the terms “e-cig” or “e-liquid” in this Panel’s point of view does not distinguish the disputed domain names from the Complainant’s notorious trademark. Quite on the contrary, the disputed domain names possibly lead a certain portion of Internet users into thinking that such tobacco related products will be available from the corresponding websites.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the MARLBORO trademark in the disputed domain names, nor is there any sort of affiliation, sponsorship or business relationship between the Complainant and the Respondent.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Another element to be taken into account is the fact that no active use of the disputed domain names appears to be taking place what makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in more than half a dozen domain names that reproduce a notorious trademark in its entirety.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web sites or other locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites or locations or of a product or service on the Respondent’s web sites or locations.

Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0 (“WIPO Overview 2.0”) states that “(…) panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. (…)”.

In the present case, the passive holding of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:

(i) the Complainant’s trademark is a famous trademark, widely known;

(ii) all of the disputed domain names incorporate the Complainant’s trademark in its entirety, having additions to them which only link them even closer to such trademark;

(iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain names;

(iv) the Respondent made use of a Privacy service / identity-shielding;

(v) some email addresses and fax numbers provided by the Respondent appear to be false ones, the Center not having been able to contact the Respondent through such; and

(vi) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use.

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 names <e-cig-marlboro.com>, <e-cig-marlborolight.com>, <ecigmarlborolight.com>, <e-liquide-marlboro.com>, <eliquidemarlboro.com>, <eliquidemarlborogold.com>, <e-liquid-marlboro.com> and <eliquidmarlboro.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: July 16, 2014