WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Kat Doe / Whoisguard protected / Whoisguard, Inc.
Case No. D2014-1583
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Kat Doe of San Jose, California, United States of America / Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <marlboroblend420.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2014. On September 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 Complainant on September 17, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 17, 2014.
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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 9, 2014.
The Center appointed Gregory N. Albright as the sole panelist in this matter on October 21, 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 is the registered owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office (the "USPTO"):
April 14, 1908
MARLBORO and Red Roof design
July 25, 1972
Complainant registered the domain name <marlboro.com> on March 3, 2000.
The disputed domain name <marlboroblend420.com> was registered on March 5, 2014.
5. Parties' Contentions
Complainant manufactures, markets, and sells cigarettes in the United States, including under its MARLBORO trademarks. Complainant and its predecessors have made and sold MARLBORO cigarettes since 1883; the modern history of the brand began in 1955.
Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks throughout the United States, and has thus developed substantial goodwill in the MARLBORO trademarks. As a result, the MARLBORO trademarks have become distinctive and are uniquely associated with Complainant and its products. Numerous UDRP administrative panels have found that the MARLBORO trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide".); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 ("Respondent creates a likelihood of confusion with the Complainant's famous trademark and deprives the Complainant from offering its products to prospective clients"); Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 ("finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels").
Complainant has registered the domain name <marlboro.com>, which points to Complainant's website, "www.marlboro.com". Complainant's website enables access to information regarding Complainant's MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.
1. The infringing domain name is confusingly similar to the MARLBORO trademarks.
The MARLBORO trademarks have become uniquely associated with Complainant and its products, and are well-known and famous throughout the United States. Complainant's registrations for certain of the MARLBORO trademarks establish that it has rights in these marks under Paragraph 4(a)(i) of the Policy.
The disputed domain name is confusingly similar to the MARLBORO trademarks. Consumers expect domain names incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) ("A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name. . . . A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.") (internal citations omitted). This is especially true within the ".com" gTLD - by far the most common generic Top Level Domain.
A domain name is confusingly similar to a trademark where, as here, the domain name incorporates the mark in its entirety. See Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (ordering transfer of domain name <marlboroblackmenthol.com>); Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675 (ordering transfer of domain name <marlboroblack.com>).
Registration and use of the disputed domain name also creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the MARLBORO trademarks. Consumers expect domain names incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner, and a domain name incorporating the name or mark is thus a valuable corporate asset. See Actelion Pharms., Ltd. v. Hackard & Holt, WIPO Case No. D2007-0838 (finding initial interest confusion where the complainant's mark was used in its entirety in a domain name pointing to the website of a law firm specializing in suing companies in complainant's industry).
2. Respondent has no legitimate interests or rights in the disputed domain name.
Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO trademarks. Respondent was never known by any name or trade name that incorporates the word "Marlboro." Complainant asserts, on information and belief, that Respondent has never sought or obtained any trademark registrations for "Marlboro" or any variation thereof. 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, 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 Respondent by the name "marlboroblend420.com".
Respondent chose to use this trademark to divert Internet users from Philip Morris USA's website by capitalizing on the public recognition of the MARLBORO trademarks. When, as here, a respondent fails to make any use of the disputed domain name, merely pointing that domain name to an inactive website, that Respondent has no rights or legitimate interests in the disputed domain name.
3. Respondent has registered and is using the disputed domain name in bad faith.
Respondent has registered the disputed domain name in bad faith by doing so with full knowledge of Complainant's rights in the MARLBORO trademarks. Given the fame of the MARLBORO trademarks, it is simply inconceivable that the Respondent registered the disputed domain name without knowledge of Complainant's rights. See, e.g., Philip Morris USA Inc. v. Auston Dicus, WIPO Case No. D2014-0328 ("It is apparent to the Panel that the Respondent was aware of the Complainant's MARLBORO mark when registering the disputed domain name, given that Complainant's mark is highly distinctive and well-known.").
Further, a simple Internet search would have revealed Complainant's extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. Complainant's rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of theUSPTO's online records. Respondent is deemed to have constructive notice of Complainant's trademark rights by virtue of Complainant's registrations for the MARLBORO trademarks with the USPTO.
The Respondent is also using the disputed domain name in bad faith. Respondent's use of the exact MARLBORO trademarks to divert Internet users from Complainant's true website in itself demonstrates bad faith use under the Policy. See, e.g., Popular Enters., LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith). Use of the disputed domain name also creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the use of the MARLBORO trademarks, and is further evidence of bad faith use of the disputed domain name. Making no active use of the disputed domain name is also evidence of bad faith.
In addition, the disputed domain name combines Complainant's "Marlboro" with "Blend420," which is a commonly-understood allusion to marijuana. Marijuana is unlawful under United States law (the Controlled Substances Act, 21 U.S.C. 801 et seq.). The disputed domain name's reference to "Blend420" reference thus tarnishes and dilutes the MARLBORO trademarks.
Finally, while identity-shielding services can serve legitimate purposes, Respondent's use of an identity-shielding service is an indicator of bad faith. See, e.g., Bluewater Rubber & Gasket Co. v. Mrs Sian Jones / Easyspace Privacy, WIPO Case No. D2010-2112.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has shown that it has long owned rights in the MARLBORO trademarks. The Complainant owns registrations of the MARLBORO marks with the USPTO. Many panels before this one have found that MARLBORO is a famous trademark.
The disputed domain name <marlboroblend420.com> is confusingly similar to the Complainant's MARLBORO trademarks. The disputed domain name incorporates MARLBORO in its entirety. "Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark." PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.
Furthermore, "a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694. Here, the Panel finds that the disputed domain name is confusingly similar to the Complainant's MARLBORO trademarks despite the addition of "blend" and "420." "Blend" is a term that might be used to describe a particular kind of tobacco, or tobacco product, and incorporating "blend" into the disputed domain name thus contributes to confusing similarity by reinforcing the impression that the disputed domain name is associated with the Complainant – a maker and seller of tobacco cigarettes.
Complainant contends, however, that "Marlboro Blend No. 420" is an allusion to a fictional type of marijuana cigarettes created by advocates for the legalization of marijuana. And one can readily find on the Internet a photo-shopped picture a pack of "Marlboro Blend No. 420s" with a green "Roof" and a cannabis leaf rather than a coat of arms. These facts support the conclusion that the Respondent quite deliberately intended to create an association between the disputed domain name and the MARLBORO marks.
Nor does the addition of the gTLD ".com" dispel confusion or have legal significance.
The Panel finds that the Complainant has established the first element under Paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has also made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the <marlboroblend420.com> domain name. Complainant asserts that it has not granted Respondent permission to make use of the MARLBORO trademarks. Nor is there any evidence that Respondent is commonly known by <marlboroblend420>.
The Complainant has also made prima facie showing that the Respondent is not making any use of the website to which the disputed domain name resolves, for a bona fide offering of goods or services, or otherwise.
Complainant also asserts that the disputed domain name tarnishes Complainant's famous MARLBORO trademarks, because "Marlboro Blend No. 420" is an allusion to marijuana. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, including the following:
"(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."
The Panel declines to decide whether the Respondent lacked any intent to tarnish the MARLBORO trademarks, principally because the Respondent did not come forward to rebut the Complainant's evidence, or to adduce any other evidence that might show that the Respondent has any rights or legitimate interests in respect of the disputed domain name. The Panel notes, however, that while some acts associated with marijuana are unlawful under United States federal law, as Complainant asserts, it is also common knowledge that marijuana has been legalized for certain medicinal purposes in some States in the United States (California, for example), and for recreational use in other States (Colorado, for example). It is not known whether the Respondent registered the disputed domain name with the intent of using a website to advocate more laws that legalize marijuana. Moreover, "[t]arnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark." Newell Operating Co. v. HostMonster.Com and Andrew Shalaby, WIPO Case No. D2008-1805 (emphasis added). The record in this default proceeding is too thin to permit an informed decision on these issues. The Panel therefore does not reach the questions of whether trademarks used to market and sell tobacco cigarettes might be considered "wholesome" for purposes of this UDRP proceeding, or whether association of a tobacco-seller's trademark with marijuana tarnishes the mark in the minds of the relevant consuming public.
Considering all the circumstances, Complainant's showing is sufficient to support an inference that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy
C. Registered and Used in Bad Faith
Complainant registered the MARLBORO trademarks with the USPTO decades before the Respondent registered the disputed domain name. Complainant has also asserted, and indeed it is common knowledge, that the MARLBORO trademarks have been widely advertised. Especially in the absence of any response to the Complaint from the Respondent, the conclusion is inescapable that the Respondent registered the disputed domain name with knowledge of the Complainant's well-known MARLBORO trademarks, and with the intention of creating a false association between the disputed domain name and those marks. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.
With respect to the question of whether the Respondent is using the disputed domain name in bad faith, Complainant asserts that the website to which the disputed domain name resolves is inactive. However, the Panel agrees with other UDRP decisions that have found that "[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith." See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273 (and cases cited therein). And the Respondent's passive holding of a disputed domain name that incorporates the entirety of the well-known MARLBORO trademarks permits an inference that the Respondent is not acting in good faith.
In addition, the Respondent did not come forward with any evidence that it intends to make any legitimate, good faith use of the disputed domain name.
Under all of the circumstances, the Panel finds that the Respondent's registration and use of the disputed domain name falls within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has established the third element under 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 <marlboroblend420.com> be transferred to the Complainant.
Gregory N. Albright
Date: November 4, 2014