WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Sergey Asmik
Case No. D2014-1294
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 Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Queensland, Australia / Sergey Asmik of Saint-Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <freegiftatmarlboro.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2014. On July 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 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 the Complainant on August 21, 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 August 21, 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 August 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on September 19, 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 a company incorporated in the United States of America. It manufactures markets and sells cigarettes in the United States. One of its brands is Marlboro. The Complainant is the owner of two MARLBORO trademarks, specifically a stylized word mark for MARLBORO registered in April 1908 and MARLBORO in conjunction with a Red Roof design, registered in July 1972. Both marks (“the MARLBORO trademarks”) are registered in respect of cigarettes.
The disputed domain name was registered on January 30, 2014. As at the date of submission of the Complaint the disputed domain name pointed to a website comprising a single directory page which contained links to a variety of unconnected services such as “Gift Certificates”, “Personalized Gift”, “Wholesale Cigarette” and “Party Favors”.
5. Parties’ Contentions
As evidence of its rights in its MARLBORO trademarks the Complainant says that Marlboro cigarettes have been made and sold by the Complainant and its predecessor entities since 1883. The Complainant says it has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and that, as a consequence of these efforts, the MARLBORO trademarks have become distinctive and uniquely associated with the Complainant. The Complainant cites decisions by previous administrative panels in other proceedings brought by the Complainant under the UDRP in which those panels have concluded that the MARLBORO trademarks are famous.
The Complainant has also registered the domain name <marlboro.com>. This domain name points to the Complainant’s website at “www.marlboro.com”which provides information about the Complainant and its products.
The Complainant says that the disputed domain name is confusingly similar to the MARLBORO trademarks. It says that simply adding the generic term “free gift at” before “Marlboro” does not serve to distinguish the disputed domain name from, or render the disputed domain name dissimilar to, the Complainant’s MARLBORO trademarks. In this respect, the Complainant cites a number of earlier UDRP decisions including Philip Morris USA Inc. v Contact Privacy Inc. Customer 0132990860 / Donell Dickson, WIPO Case No. D2013-1373, in which the domain name <marlborogreenoffers.com> was found to be confusingly similar to the Complainant’s MARLBORO mark, and MasterCard International Incorporated v. Juan Curtis, WIPO Case No. D2008-1295, in which the addition of the term “free” in the domain name <free-mastercard.com> was “insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity”. The Complainant asserts that the addition of the phrase “free gift at” to the MARLBORO trade mark exacerbates the likelihood of confusion as an Internet user is likely to believe that the website to which the disputed domain name points is a source of free gifts or of coupons for adult smokers, distributed by the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It says that the Respondent has no affiliation or connection with it or its products and that the Respondent was never known by any name or trade name which incorporates the word “Marlboro”. It states also that the Respondent has not received any license, authorization or consent, express or implied, to use the MARLBORO trademarks in a domain name or in any other manner.
The Complainant contends that the Respondent’s use of the MARLBORO marks by its inclusion in the disputed domain name is deliberate and that the Respondent chose the disputed domain name in order to attract Internet users to its website. In this respect, the Complainant refers to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in which the panel commented that, when a complainant’s trademark was distinctive, it was “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainants”. The Complainant says that the evident intention of the Respondent to divert Internet users seeking to visit the Complainant’s website, and thereby to trade on the goodwill associated with the Complainant, does not give rise to a right or legitimate interest. The Complainant says that simply pointing the disputed domain name to a parked, directory site does not confer any rights on the Respondent. In support of this contention it refers to two UDRP decisions, including CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 in which the panel found that registration of a domain name for the purpose of misleading or diverting consumers cannot give rise to rights or legitimate interests.
The Complainant says that the disputed domain name has been registered and used in bad faith. In respect of bad faith registration, the Complainant says that its MARLOBORO trademarks are both very distinctive and very well-known and that the Respondent would have been aware of its trademarks at the time it registered the disputed domain name. In any event, it says that even a simple Internet search or an online search at the United States Patent and Trade Mark Office website would have revealed the Complainant’s extensive use of the MARLBORO trademarks. Accordingly, irrespective of whether the Respondent had actual notice of the Complainant’s MARLBORO trademarks, the Complainant says that the Respondent had constructive notice of them.
In support of its contention of bad faith use, the Complainant says that use of the disputed domain name for a website displaying pay-per-click advertisements is evidence that the Respondent is using the disputed domain name in bad faith in order to trade on the Complainant’s goodwill in its MARLBORO trademarks by obtaining revenue from the links displayed on the Respondent’s website. The Complainant refers to the UDRP decision “Dr.Martens” International Trading GmbH. and “Dr.Maertens” Marketing GmbH v Private Whois Service, WIPO Case No. D2011-1191 in which the panel found that the use of domain names confusingly similar to the Complainant’s trade marks in conjunction with a website which contained pay-per-click links to third party websites amounted to bad faith use.
The Complainant also says that use of an identity-shielding service can be an indicator of bad faith use. The Complainant refers to the UDRP decision of Fifth Third Bancorp v Secure Whois Information Service, WIPO Case No. D2006-0696 in which the panel found that use of an identity shielding service may (in conjunction with other evidence of bad faith) be indicative of bad faith use and registration of a domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 with respect to 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
The Complainant has established that it has rights in the word “Marlboro”. The “Red Roof” MARLBORO trademark, which depicts the word “Marlboro” positioned within, and as part of, the image which appears on the front of the Complainant’s “Marlboro” cigarette cartons, contains graphic elements in addition to the word “Marlboro”, but the word is a major element of the trademark. The second MARLBORO trademark cited by the Complainant, whilst registered for the word “marlboro” in a stylized form, is clearly sufficient to give the Complainant rights in the word “Marlboro” particularly when coupled with the extensive use the Complainant has made of its trademarks.
When comparing the word in which a complainant has rights with a disputed domain name it is widely established that the applicable generic Top-Level Domain (“gTLD”) suffix “.com” may be disregarded for the purpose of determining whether a domain name is confusingly similar to a complainant’s mark.
The Complainant’s MARLBORO trademarks are very distinctive in that “marlboro” has no known meaning (at least, not in the English language) and has been extensively used by the Complainant over many years in connection with its Marlboro brand of cigarettes. The insertion of words which are entirely descriptive in character, namely, “free gift at” prior to the word “marlboro” does not serve to render the disputed domain name dissimilar to the Complainant’s trademarks. Moreover, the similarity is confusing; as the Complainant has said, the disputed domain name, taken as a whole would be perceived by many Internet users as suggesting that a free gift of some sort is available from the Complainant at the website to which the disputed domain name points. The words “free gift at” accordingly exacerbate rather than diminish any confusion caused as a result of the Respondent’s use incorporation of the Complainant’s MARLBORO trademarks within the disputed domain name.
The disputed domain name is accordingly confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertions that it has never licensed or authorized the Respondent to use its MARLBORO trademarks, that the Respondent has no connection or affiliation with its products and that there is no evidence that the Respondent has been commonly known by the name “Marlboro” or any name that incorporates “Marlboro”.
Having regard to the distinctive character of the MARLBORO trademarks and the lack of any known reason or explanation as to why the Respondent might claim an entitlement to use a domain name which incorporated the trademarks, it is accordingly for the Respondent to explain why it has a legitimate interest in the disputed domain name.
In the absence of any response from the Respondent and having regard to the facts and matters outlined above, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. As the panel said in “Dr.Martens” International Trading GmbH. and “Dr.Maertens” Marketing GmbH v Private Whois Service, WIPO Case No. D2011-1191 “the Respondent’s use of domain names confusingly similar to the Complainants’ trademarks to draw in Internet users and divert them to third-party websites, many selling competing goods, in exchange for click-through revenue is not a bona fide commercial use of the disputed domain names such as to give rise to a right or legitimate interest in them”. This approach is appropriate even if the websites to which the links point sell non-competing goods.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has not submitted evidence in these proceedings relating to the level of awareness of its trademarks nor of the level or nature of its advertising spent promoting the MARLBORO trademarks. Moreover, whilst the Complainant has referred to a large number of other UDRP decisions which have commented on the fame of the Complainant’s MARLBORO trademarks, it is the evidence submitted by the Complainant in its Complaint in these proceedings which is more material.
The Panel accepts, however, that at the time the Respondent registered the disputed domain name, the Complainant’s business and its MARLBORO trademarks were very well known. Save for the reference to “Wholesale Cigarette” in the directory page to which the disputed domain names points, there is no direct evidence within the Complaint which establishes that the Respondent was aware of the Complainant and its trademarks at the date of registration of the disputed domain name. However, the Panel finds that the word “marlboro” is sufficiently distinctive that its use within the disputed domain name indicates that the Respondent was aware of the existence of the Complainant’s trademarks and the fame attached to them at the time the disputed domain name was registered. In the absence of any evidence which could provide any legitimate reason for registering a trademark so close to the Complainant’s trademarks, the Panel finds that the disputed domain name was registered in bad faith.
Turning next to the issue of bad faith use, the form of website to which the disputed domain name points is plainly intended to generate income for the Respondent through the use of the “pay-per-click” links on it. The Panel accepts the Complainant’s contention that the only reason the Respondent can have for using the disputed domain name in order to point to its website is to capture Internet traffic intended for the Complainant. It is not possible to say how many Internet users might type the disputed domain name into the address bar of their web browser or into a search engine which then directs the Internet user to the website to which the disputed domain name points. But any Internet users who did so would unquestionably be seeking a website operated by or on behalf of the Complainant and not a directory page operated by the Respondent. In other words, by its use of the disputed domain name the Respondent is capturing traffic intended for the Complainant in order to generate income. This is conduct which is very similar to one of the non-exhaustive examples of bad faith use set out at paragraph 4(b) of the Policy, specifically that described at paragraph 4(b)(iv): that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith and, accordingly, that the Complainant has satisfied each of the elements of paragraph 4(a) 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 <freegiftatmarlboro.com> be transferred to the Complainant.
Date: September 30, 2014