WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Glenn Volpe
Case No. D2014-1700
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 Glenn Volpe of Haddonfield, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain names <marlborogreenies.com>, <marlborogreenmedicine.com> and <marlborohealth.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2014. On September 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 30, 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.
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 October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014.
On October 22, 2014, an attorney retained by Respondent, sent an email to the Center asking the Center to confirm that (1) the due date for Response was October 27, 2014; (2) Complainant is not requesting a monetary remedy; and (3) should Respondent decide to not respond, the only remedy would be a transfer of the disputed domain names. The Center responded by email on October 23, 2014, confirming the response due date and also confirming that the remedy sought is a transfer of the disputed domain names. Respondent thereafter did not submit any further response. Accordingly, the Center notified the Respondent's default on October 29, 2014.
The Center appointed Gregory N. Albright as the sole panelist in this matter on November 5, 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 names <marlborogreenmedicine.com> and <marlborogreenies.com> were registered on February 17, 2014. The disputed domain name <marlborohealth.com> was registered on March 19, 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 names are 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 names are 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).
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>). And the addition of a generic top-level domain name 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.
2. Respondent has no rights or legitimate interests 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." In addition, the Whois records associated with the disputed domain names do not identify Respondent using any names consisting of or incorporating "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.
Complainant contends that 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.
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.
Complainant asserts on information and belief that Respondent registered the disputed domain names to trade on the goodwill of Complainants MARLBORO trademarks by obtaining revenue from the pay-per-click advertisements displayed on the infringing websites. Previous panels have found that this is evidence of bad faith. See, e.g., Dr. Martens Int'l Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1991.
The Respondent is also using the disputed domain name in bad faith. Respondent's use of the exact MARLBORO trademarks to divert adult smokers from Complainant's 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. See, e.g., Osuuspankkikeskus OSK v.Registerfly.com, WIPO Case No. D2006-0461 (referencing initial interest confusion in the panel's finding of bad faith registration and use).
Respondent did not formally reply to 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 UDRP panels before this one have found that MARLBORO is a famous trademark.
The disputed domain names <marlborogreenies.com>, <marlborogreenmedicine.com>, and <marlborohealth.com> are confusingly similar to the Complainant's MARLBORO trademarks. Each of the disputed domain names 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 names are confusingly similar to the Complainant's MARLBORO trademarks despite the addition of the terms "greenies," "greenmedicine," and "health." MARLBORO is a strong trademark and it is the dominant feature of the disputed domain names.
Nor does the addition of the generic Top Level Domain (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 disputed domain names. Complainant asserts that it has not granted Respondent permission to make use of the MARLBORO trademarks. The WhoIs information for Respondent does not identify him by "marlboro," nor is there any other evidence that Respondent is commonly known by "marlboro."
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 asserts that Respondent is instead using the disputed domain names to divert traffic to websites from which Respondent derives click-through revenue.
As noted above, Respondent's counsel corresponded informally with the Center about the Complaint in this matter. After confirming that the only remedy sought is a transfer of the disputed domain names, Respondent chose not to submit a formal response to the Complaint. Respondent thus knowingly waived an opportunity to show that he has rights or legitimate interests in respect of the disputed domain names, and this supports the conclusion that he has none.
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 names. 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 names with knowledge of the Complainant's well-known MARLBORO trademarks, and with the intention of creating a false association between the disputed domain names and those marks. Accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.
Complainant has asserted, on information and belief, that Respondent is trading on Complainant's goodwill in the MARLBORO trademarks by obtaining revenue from pay-per-click advertisements on the websites to which the disputed domain names resolve. Respondent did not submit any Response to deny this.
Under all of the circumstances, the Panel finds that the Respondent's registration and use of the disputed domain names 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 names <marlborogreenies.com>, <marlborogreenmedicine.com> and <marlborohealth.com> be transferred to the Complainant.
Gregory N. Albright
Date: November 19, 2014