WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Milojko
Case No. D2014-1341
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 ("United States").
The Respondent is Milojko of Serbia.
2. The Domain Name and Registrar
The disputed domain name <marlboroadvance.com> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 13, 2014, the Center received the request of suspension of the proceedings from the Complainant by email. The Center notified the parties of the suspension of the proceedings on August 14, 2014. On September 16, 2014, upon request from the Complainant, the proceedings were reinstituted.
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 September 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on October 23, 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 manufactures, markets and sells cigarettes in the United States, including under its famous MARLBORO trademarks. Marlboro cigarettes have been made and sold by the Complainant (and its predecessors) since 1883. For many decades, the Complainant has used its trademarks comprising MARLBORO for its tobacco and smoking-related products.
The Complainant is the proprietor of a number of registered trademarks in respect of MARLBORO including United States trademark No. 68,502 MARLBORO registered on April 14, 1908.
The Domain Name was registered on January 28, 2014. At the date of the Complaint, the Domain Name resolved to a website (the "Website") comprising advertising links to a number of third party websites. In addition, the Website included a hyperlink comprising the text "BUY THIS DOMAIN. The domain MARLBOROADVANCE.COM may be for sale by its owner!"
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its MARLBORO trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions. On August 8, 2014 the Respondent sent an email to the Complainant's representative stating that [sic] "an error occurred when registering <marlboroadvance.com> did not know how to delete it and the site was left to do. If you can delete the site Thank you". In a later email, the Respondent agreed to the transfer of the Domain Name to the Complainant and as a result the administrative proceedings were suspended. In the event, however, the Domain Name was not transferred and the proceedings were reinstated.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted, uncontested rights in the trademark MARLBORO both by virtue of its various trademark registrations and as acquired through widespread use for very many years. Ignoring the suffix ".com" for this purpose, the Domain Name comprises the trademark MARLBORO together with the word "advance". The generic term "advance" does not detract from the distinctiveness of the MARLBORO trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark or marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent can have no rights or legitimate interests in the Domain Name. The Respondent is not authorised in any way by the Complainant to use the MARLBORO mark as part of the Domain Name. The Website simply features advertising links to third party websites and includes the statement that the Domain Name may be for sale. The Respondent's email to the Complainant's representative of August 8, 2014 clearly implies that the Respondent accepts that it does not have any rights or legitimate interests in respect of the Domain Name.
Indeed, the Respondent has chosen not to reply to the Complaint or to make out any claim to any relevant rights or legitimate interests or otherwise to displace the prima facie case made out by the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the notoriety of the Complainant's MARLBORORO trademark, the Panel is in no doubt that the Respondent must have had the Complainant and its rights in the MARLBORO name in mind when it registered the Domain Name. Further, the Panel cannot conceive of any legitimate, bona fide reason for the registration of the Domain Name. The circumstances of the registration and the use to which the Domain Name has been put represent paradigm bad faith registration and use with a view to financial gain.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboroadvance.com> be transferred to the Complainant.
Date: November 2, 2014