WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Bob Pham Domain Admin / Privacy Protection Service Inc. d/b/a privacyprotect.org
Case No. D2014-1342
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmont, Vancouver, United States of America (“US”), represented by Arnold & Porter, US.
The Respondent is Bob Pham/Domain Admin of Hanoi, Viet Nam / Privacy Protection Service Inc. d/b/a privacyprotect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <marlboeo.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 August 7, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 12, 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 13, 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 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on September 10, 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 Respondent provides a privacy protection service, that is a shielding service which protects the identity of the actual registrant of <marlboeo.com> (“the disputed domain name”) from public view.
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 “Instant Payday Loans”, “Find Local Dentist”, “Pay Traffic Ticket” and “School Math”.
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 “marlboeo” is an obvious misspelling of “marlboro” and that the small differences between these two words does not dispel a likelihood of confusion. The Complainant refers to a number of previous UDRP decisions in which domain names which comprise only a very slight variation to a complainant’s trademark have been held to be confusingly similar to that trademark, including RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190.
The Complainant asserts that the Respondent has no legitimate rights or 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 that 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 Complainant”. 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 Donald J. Trump v. Mediaking LLC, WIPO Case No. D2010-1404 in which the panel cited a number of earlier decisions, each of which found that the creation of directory and pay-per-click landing pages does not confer rights in the domain names selected by the registrants of such sites.
The Complainant says that the disputed domain name has been registered and used in bad faith. Dealing first with its allegations 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 using the MARLBORO trademarks to lure Internet users to its website demonstrates bad faith use under the Policy. In this respect, the Complainant refers to a number of cases, including Ameriquest Mortgage Co v. Phayze Inc, WIPO Case D2002-086, in which the panel found bad faith registration and use because the respondent was using the complainant’s trademark as a component of its domain name in order to attract traffic that he would not otherwise get for its website.
The Complainant also says that use of a identity-shielding service such as the one offered by the Respondent can, if used for the purpose of preventing a party being held accountable for the infringing use of a domain name (as the Complainant contends is the case here), be an indicator of bad faith use. The Complainant refers to the decision of Bluewater Rubber & Gasket Co v. Mrs Sian Jones/Easyspace Privacy, WIPO Case No. D2010-2112 in which the panel cited the fact that the underlying registrant had used the respondent’s privacy service in order to avoid accountability for its activity as one of the factors which supported a finding of bad faith.
Finally, the Complainant says that the Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant as it would inevitably cause confusion to Internet users and that this also evidences bad faith.
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 trade mark 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 suffix “.com” should be disregarded for the purpose of determining whether a disputed domain name is confusingly similar to a complainant’s mark.
The word “marlboeo” does not have any meaning in the English language and is not known to have a meaning in any other language. It differs in only one letter from the Complainant’s MARLBORO trademarks. Moreover, that difference appears towards the end of the mark and does not materially affect the visual, aural or conceptual elements of the MARLBORO trademarks. The word “marlboeo” is accordingly confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that it has never licensed or authorized the Respondent to use its MARLBORO trademarks. It says that the Respondent has no connection or affiliation with its products. There is no evidence that the Respondent has been commonly known by the name “marlboeo”.
The Panel accepts the Complainant’s submission that the fact that the directory page to which the disputed domain name points does not provide links to any services which have any direct or indirect connection with the Complainant or its products nor promote any form of connection with the Complainant does not thereby entitle the Respondent to use the disputed domain name.
On the basis of the facts set out above, it is not possible to conceive of a legitimate reason as to why the Respondent chose to use the disputed domain name. The onus is accordingly on 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.
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 or of the level or nature of its advertising spend promoting the MARLBORO trademarks. Moreover, whilst the Complainant has referred to 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. Whilst there is nothing in the directory page to which the disputed domain name points which establishes that the Respondent was aware of the Complainant and its trademarks at the date of registration of the disputed domain name, the Panel finds that the word “marlboro” is sufficiently distinctive and that the disputed domain name sufficiently unusual and so close to the Complainant’s MARLBORO trademarks that the Respondent must have been aware of the existence of those 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 lawful 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. There is nothing inherently objectionable about websites of this type; rather, it is the use of the disputed domain name in order to point to such a website to which the Complainant objects. The Panel accepts the Complainant’s contention that the only reason the Respondent can have for using the disputed domain name is to capture Internet traffic intended for the Complainant’s website in circumstances where Internet users misspell or mistype the Complainant’s name and thereby derive income from the fact that some of those users then click on one of more of the links which appear at the Respondent’s website. 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 on-line 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 <marlboeo.com> be transferred to the Complainant.
Date: September 22, 2014