WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Moniker Privacy Services / Adam Feinberg
Case No. D2014-0914
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Moniker Privacy Services of Portland, Oregon, United States of America / Adam Feinberg of Concord, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cheapmarlboroscigarettes.com> is registered with Microbreweddomains.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 19, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 19, 2014.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 15, 2014.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on August 6, 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 has registered a number of MARLBORO trademarks, the earliest of which has a date of first use in 1883. Respondent registered the disputed domain name on December 27, 2013. The disputed domain name leads to a website that purports to offer various commercial items through “www.cafepress.com.”
5. Parties’ Contentions
Complainant asserts that it has used the MARLBORO trademark for cigarettes since 1883 and that it has a number of trademarks for MARLBORO. Complainant asserts that the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark, and among other things gives rise to initial interest confusion. Complainant asserts that Respondent has no connection or affiliation with Complainant, has not been known by “Marlboro”, has never sought or obtained any trademark registrations for “Marlboro”, and that Complainant has not licensed, authorized, or consented to Respondent using the MARLBORO mark. Complainant asserts that Respondent is attempting to divert Internet users from Complainant’s website to Respondent’s commercial website, and that Respondent was aware of Complainant’s trademark when Respondent registered the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(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 respect of 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
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registrations demonstrate that Complainant has rights in the MARLBORO mark.
The disputed domain name consists of the MARLBORO mark with the generic word “cheap” appended to the front, an “s” and the generic word “cigarettes” appended to the end, and the “.com” generic Top-Level Domain (“gTLD”). The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). See also Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009-0718 (“Use of the word ‘flys’, which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant’s mark”); Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (“in the first domain name, the word ‘automobile’ refers only to the products to which the corresponding disputed website relates, and in the second domain name the word ‘group’ may refer to Complainant’s different business entities implying that Respondent’s websites “www.volvoautomobile.com” or “www.volvogroup.com” are official websites or are endorsed or belong to Complainant”). Nor does the addition of the “.com” gTLD detract from confusing similarity. WRc plc v. W&R Corp., WIPO Case No. D2007-1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark”); Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003 (“The addition of a gTLD and a generic term[…] that has an obvious relation to Complainant’s business is insufficient to overcome the confusing similarity that results from using Complainant’s […] mark in the circumstances here presented”).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [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 or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by <cheapmarlboroscigarettes.com>. Rather, Complainant asserts that Respondent is not affiliated with Complainant and is not licensed to use Complainant’s MARLBORO mark. Further, the submissions attached to the Complaint indicate that Respondent has used the disputed domain name in connection with the sale of commercial goods.
The sale of commercial products using complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934. Respondent has not submitted any Response, and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
There is evidence in this matter that Respondent knew of Complainant’s well-known trademark and used the confusingly similar disputed domain name to attract Internet users to Respondent’s website in order to offer commercial goods. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is 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 <cheapmarlboroscigarettes.com> be transferred to Complainant.
Bradley A. Slutsky
Date: September 5, 2014