WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Pavol Icik, Poste restante / Chen Xiaojie, Privacy Protection Service

Case No. D2014-1295

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 Pavol Icik, Poste restante of Bratislava City, Slovakia / Chen Xiaojie, Privacy Protection Service of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <marlvoro.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (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 July 31, 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 01, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 1, 2014, the Center transmitted an email to the parties in English and Slovak regarding the language of the proceeding. On August 6, 2014 the Complainant filed an amended Complaint translated into Slovak. The Respondent did not submit comments on the language of the proceeding within the specified due date.

The Center verified that the Complaint, together with the amendment to 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 August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on September 18, 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 has exclusive rights in the MARLBORO trademarks. The Complainant manufactures, markets, and sells cigarettes in the US ,including cigarettes under its famous MARLBORO trademarks.

MARLBORO cigarettes have been made and sold by the Complainant, and various predecessor entities, since 1883, with the modern history of the brand beginning in 1955. For many decades, the Complainant has used the MARLBORO trademarks and variations thereof in connection with its tobacco and smoking-related products.

The Complainant is the registered owner of the following trademarks, among others, on the Principal Register of the US Patent and Trademark Office ("USPTO"), which are valid, subsisting and incontestable pursuant to 15 U.S.C., § 1065:

MARLBORO trademark registration No. 68,502, registered on April 14, 1908 for cigarettes MARLBORO and trademark Red Roof Design registration No.938,510, registerd on July 25, 1972 for cigarettes. True and correct copies of printouts of the registration certificates for the registrations identified in paragraph 12 to the Complaint are attached as Annex C to the Complaint, along with printouts of updated status information for these trademarks.

The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks throughout the US, and has thus developed substantial goodwill in the MARLBORO trademarks. Through such widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products. Indeed, the Complainant remarks to numerous UDRP panels that already have determined the MARLBORO trademarks are famous (Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc.v. Pieropan, WIPO Case No. D2011-1735).

The Complainant has registered the domain name <marlboro.com>. This domain name points to Complainant's website, "www.marlboro.com", which enables access to information regarding of Complainant's Marlboro products, and special offers to age-verified adult smokers 21 years of age or older. True and correct printouts of the home page of the MARLBORO website and the WhoIs record for the <marlboro.com> domain name are attached as Annex D to the Complaint.

Respondent registered the disptued domain name <marlvoro.com> on January 30, 2014. The disputed domain name points to a directory website, which displays links to other websites. These links may change from time to time, or may change based upon which individual user is visiting the site. The Respondent most likely receives revenue when Internet users click on these links. A screen capture of the homepage of the website associated with the disputed domain name is attached as Annex E to the Complaint.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name <marlvoro.com> is confusingly similar to the MARLBORO trademarks. Through widespread, extensive use in connection with its products, the MARLBORO trademarks have become uniquely associated with the Complinant and its products, and are well known and famous throughout the US. Complainant's registrations for certain of the MARLBORO trademarks establish that it has rights in these trademarks under paragraph 4(a)(i) of the Policy. The Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), according which "If the Complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark" (see also Roust Trading Ltd. v. AMGLLC, WIPO Case No. D2007-1857

The Complainant further introduces that the disputed domain name <marlvoro.com> is confusingly similar to the MARLBORO trademarks. The disputed domain name includes an obvious and deliberate misspelling of the famous MARLBORO trademark, i.e., "marlvoro", which replaces the letter "b" with the letter "v". The second level domain name, "marlvoro", is visually and aurally confusingly similar to the MARLBORO trademark. The Complainant refers to analogous situations, where panels have found a registrant's domain name to be confusingly similar to the MARLBORO trademark and ordered the domain name to be transferred (Pfizer Inc. v.BargainName.com, WIPO case D2005-0299).

Further the Complainant submits, that previous UDRP panels have found, the addition of a generic Top-Level Domain ("gTLD") such as ".com" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416).

Further the Complainant introduces that the Respondent has no legitimate interests or rights in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant 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, and indeed could never do so given the Complainant's pre-existing and exclusive rights to this mark. The Respondent has not received any license, authorization, or consent — express or implied — to use the MARLBORO trademarks in the disputed domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. Respondent's appropriation of the MARLBORO trademark in the infringing domain name is no accident. Clearly, the Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO trademark with the Complainant's tobacco products. As one panel found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, when a complainant's trademark is distinctive, it is "not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant," and thus an illegitimate "trader" such as the Respondent could have no legitimate interest in the trademark. In fact, a previous panel commented that it was inconceivable for the Respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks "given the longtime use of the MARLBORO trademarks and strength of its brand (Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790).

Rather, the Complainant argues that the Respondent's objective at the outset was to divert Internet users seeking to visit the Complainant's legitimate website to Respondent's directory website. Such misappropriation of the MARLBORO trademarks does not give rise to a right or legitimate interest but, portends Respondent's bad faith (Fluor Corp. v. Above.com Domain Privacy, WIPO Case No. D2010-0583). Such a use of the Complainant's trademark for the purpose of misleading or diverting consumers is not bona fide and cannot confer any rights or legitimate interests upon a Respondent (CIMB Group Sdn. Bhd., v. PrivacyProtect.org, WIPO Case No. D2010-1680); Pharmacia & Upjohn Co. V. Moreonline, WIPO Case No. D2000-0134).

The Complainant finally introduces that the Respondent has registered and is using the disputed domain name in bad faith by doing so with full knowledge of Complainant's rights in the famous MARLBORO trademarks (Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609). Even a simple Internet search would have revealed the Complainant's extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. The Complainant's rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online. The Respondent is deemed to have constructive notice of the Complainant´s trademark rights by virtue of the Complainant's federal registrations for those of the MARLBORO trademarks listed in paragraph 12 to the Complaint (Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. D2000-0090).

The Complainant argues that it is well-settled that Respondent's very method of infringement — using a term confusingly similar to the MARLBORO trademark to lure Internet users to its website — demonstrates bad faith use under the Policy (Philip Morris USA Inc. v. Mamouni Abdellah, supra; Popular Enters., LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742); Ameriquest Mortgage Co.v. Phayze Inc., WIPO Case No. D2002-0861), finding bad faith registration and use because respondent was "attracting traffic that he would otherwise not get for his website".

In addition, upon information and belief, the Respondent registered the disputed domain name to trade on the goodwill of the Complainant's MARLBORO trademarks by obtaining revenue each time an Internet user clicks on one of the links displayed on the Respondent's direktory website. As previous panels have found, this type of conduct is evidence of bad faith (Dr.Martens Int'l Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1191). The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainant's trademarks, adopting confusingly similar domain names and using them to host links to third-party websites offering products for sale and parking domain name to generate click-through revenue for registrant was registered and used in bad faith (CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Language of the Proceedings

On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Slovak. The Complainant submitted its Complaint both in English and in Slovak. The Respondent did not provided any comments in this regard. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. In this case, the Panel notes that disputed domain name <marlvoro.com> directs to the Respondent's website (Annex E to the Complaint) which is exclusively in English. It is therefore reasonable to presume that the Respondent has the ability to communicate in English in order to conduct its business over the website in English. Moreover, the Respondent did not submit comments regarding the language of the proceedings by the due date and it is therefore inferred that the Respondent has no objection and that English be the language of the proceedings. The Panel, taking into account the circumstances of this case, especially the fact that the Respondent appears to be familiar with the English language, and a number of recent UDRP proceedings (Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883; Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English.

B. Identical or Confusingly Similar

The Panel accepts the Complainant's arguments that the disptued domain name <marlvoro.com> is confusingly similar to the Complainat's MARLBORO US trademark No. 68,502 with registration date April 14,1908, as the disputed domain name includes an obvious and deliberate misspelling of the famous MARLBORO trademark, which replaces the letter "b" with the letter "v". The Panel is of the opinion that replacement of these two letters does not avoid confusing similarity of the disputed domain name and the trademark MARLBORO. The disputed domain name is visually and aurally confusingly similar to the MARLBORO trademark. The likelihood of confusion between those Complainant's trademark and the disputed domain name is beyound doubt (Pfizer Inc. v.BargainName.com, WIPO case D2005-0299). As well the inclusion of the gTLD suffix ".com" does not avoid confusing similarity of the domain name and trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310).

For all the above cited reasons, the Panel concludes that disputed domain name is identical and confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

C. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, it has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

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

The Panel takes into account the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word "Marlboro." The Respondent has not received any license, authorization, or consent — express or implied — to use the Complinant's MARLBORO trademarks in the disputed domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. The Respondent chose to use the Complainant's trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO trademark with the Complainant's tobacco products. The Panel accepts the argument of the Complainant that the Respondent is seeking to divert Internet users to visit the Complainant's legitimate website to the Respondent's directory website. Such misappropriation of the MARLBORO trademarks does not give rise to a right or legitimate interest but, portends Respondent's bad faith (Fluor Corp. v. Above.com Domain Privacy, WIPO Case No. D2010-0583). Such a use of the Complainant's trademark for the purpose of misleading or diverting consumers is not bona fide and cannot confer any rights or legitimate interests upon a Respondent (CIMB Group Sdn. Bhd., v. PrivacyProtect.org, WIPO Case No. D2010-1680); Pharmacia & Upjohn Co. v Moreonline, WIPO Case No. D2000-0134).

Moreover, the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the disputed domain name. The Panel is of the view that the Respondent has used Complainant's trademarks in the disputed domain name to create the impression that it is associated with the Complainant. The Respondent's use of the Complainant's trademarks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with the Complainant.

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

D. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered and is using the disputed domain name in bad faith as the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademark and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name. In the Panel's view, there is no doubt that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that 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 of a product or service on that website or location.

The Panel accepts the arguments of the Complainant that the Respondent registered the disputed domain name to trade on the goodwill of the Complainant's MARLBORO trademark by obtaining revenue each time an Internet user clicks on one of the links displayed on the Respondent's directory website. As previous panels have found, this type of conduct is evidence of bad faith (Dr.Martens Int'l Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1191). The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainant's trademarks, adopting confusingly a similar domain name and using it to host links to third-party websites offering products for sale and parking domain name to generate click-through revenue for registrant was registered and used in bad faith (CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

For the above cited reasons, the Panel finds that the disputed domain name <marlvoro.com> was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 name <marlvoro.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: September 30, 2014