WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Sam Maiden / Websites Unlimited, LLC
Case No. D2014-1012
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("US"), represented by Arnold & Porter, US.
The Respondent is Sam Maiden / Websites Unlimited, LLC of Chesterfield, Missouri, US.
2. The Domain Name and Registrar
The disputed domain names <buymarlboroecig.com> 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 June 13, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on June 13, 2014, the Registrar transmitted by email to the Center its verification response confirming the 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 the Respondent of the Complaint, and the proceedings commenced on June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2014.
The Center appointed R. Eric Gaum as the sole panelist in this matter on July 24, 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 Philip Morris USA Inc. ("PM USA") owns the rights to the registered trademark MARLBORO for "cigarettes," which was registered April 14, 1908 at US Reg. no. 68,502, with a claimed first use as early as 1883.
The Respondent registered the disputed domain name <buymarlboroecig.com> on February 9, 2014. The disputed domain name currently resolves to a Registrar parking website with links to numerous other sites.
5. Parties' Contentions
The Complainant states:
PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its MARLBORO Trademarks. MARLBORO cigarettes have been made and sold by PM USA (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, PM USA has used the MARLBORO Trademark and variations thereof in connection with its tobacco and smoking-related products.
PM USA has registered the domain name <marlboro.com>. This domain name points to PM USA's website, "www.marlboro.com", which enables access to information regarding PM USA, Marlboro products, and special offers to age-verified adult smokers 21 years of age or older.
An Internet search would have revealed PM USA's extensive use of the MARLBORO Trademarks as source identifiers for its tobacco products. PM USA's rights in the MARLBORO Trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the registered trademark records that are readily accessible online.
The disputed domain name is confusingly similar to the Complainant's mark, as it wholly incorporates the mark. The addition of generic terms, "buy" and "ecig", does nothing to distinguish the disputed domain name from the Complainant's mark.
The disputed domain name points to a parking website with links to numerous other sites. These sites may change from time to time.
The Respondent has no legitimate interests or rights in the disputed domain name. The Respondent has no connection or affiliation with PM USA, or any of the products provided by PM USA under the MARLBORO Trademarks. The Respondent was never known by any name or trade name that incorporates the word "Marlboro." On information and belief, the Respondent has never sought or obtained any trademark registrations for "Marlboro" or any variation thereof. The Respondent has not received any license, authorization, or consent — express or implied — to use the Complainant's trademarks in a domain name or in any other manner, either at the time when Respondent registered and began using the disputed domain name, or at any other time since. In addition, the WhoIs record associated with the disputed domain name does not identify the Respondent by the name <buymarlboroecig.com>.
The Respondent registered and uses the disputed domain name in bad faith. Respondent was fully aware of the Complainant and its mark when it registered the disputed domain name and uses the disputed domain name to derive click-through revenue on the back of the Complainant's goodwill.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the Complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WhoIs database and as verified by the Registrar. The Center also forwarded notification of default to the Respondent via email.
Based on the methods employed to provide the Respondent with notice of the Complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of the proceeding. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent's domain name is 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 domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
As the Respondent has failed to submit a response to the Complaint, the Panel may accept as true all reasonable allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
Based upon the registered trademark for MARLBORO and the continuous use of the mark, the Complainant clearly has rights in the mark. The Panel agrees with the Complainant that the trademark is reproduced in entirety within the disputed domain name. The Panel also finds that the additions of "buy" and "ecig" do not sufficiently distinguish the disputed domain name from the trademark. The Complainant asserts, and the Panel agrees, that the domain name <buymarlboroecig.com> is confusingly similar to the trademark MARLBORO. The Panel finds that the domain name <buymarlboroecig.com> is confusingly similar to the trademark MARLBORO owned by the Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
There is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the domain name <buymarlboroecig.com>. The Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use by presumably reaping pay-per-click revenues at the website. The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <buymarlboroecig.com> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:
(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 web site or location or of a product or service on your web site or location.
The Complainant asserts that the parking website currently at <buymarlboroecig.com> displays pay-per-click links that create revenue for the Respondent. In the absence of contrary evidence, the Respondent's use of the confusingly similar domain name to the MARLBORO trademark for revenue generation is intended to attract for commercial gain Internet users to the website at the disputed domain name. The Panel finds the Complainant has established that the Respondent registered and used the domain name <buymarlboroecig.com> in bad faith, pursuant to 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 disputed domain name <buymarlboroecig.com> be transferred to the Complainant.
R. Eric Gaum
Date: August 8, 2014