WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Trace Diggins, Domain Proxy
Case No. D2014-1780
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States of America.
The Respondent is Trace Diggins, Domain Proxy of Tampa, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <marlboro.blue> and <marlboro.red> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2014. On October 13, 2014, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On October 15, 2014, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the contact details of the Registrar, the Complainant filed an amended Complaint on October 19, 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 October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2014.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 2, 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 in the business of making and selling cigarettes, and has used for its products various trademarks that feature the MARLBORO designation. The Complainant has received multiple registrations from the United States Patent and Trademark Office, including: MARLBORO, for “Cigarettes”, on April 14, 1908 (Registration Number 68502); and MARLBORO [stylized version] for “Tobacco Products, Namely, Cigarettes”, on July 10, 2012 (Registration Number 4171817).
The Complainant also registered the domain name <marlboro.com> on March 6, 2000.
The Respondent registered both disputed domain names <marlboro.blue> and <marlboro.red> on July 21, 2014.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.
In addition, the Complainant states, inter alia:
“Respondents are not the real registrants of the Infringing Domain Names, but instead are listed in the registrant information as part of a domain registrant identity shielding service”; and
“Respondents chose to use [the Complainant’s trademark] to divert Internet users from [the Complainant’s] website to the webpages to which ‘marlboro.red’ and ‘marlboro.blue’ resolve by capitalizing on the public recognition of the MARLBORO® mark”.
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
In order to prevail, the Complainant must demonstrate that each element under paragraph 4(a) of the Policy is present.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <marlboro.blue> and <marlboro.red> are identical or confusingly similar to the Complainant’s MARLBORO mark. The disputed domain names differ from the mark only by the addition of the generic Top-Level Domain (gTLD), “.blue” and “.red”. The Complainant has rights in the MARLBORO mark.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names; the Complainant has met its initial burden of making a prima facie showing. Thus, the burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that each disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
Here, Internet users who resort to the disputed domain names are directed to an inactive website that contains the text: “This webpage is not available.”
In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides guidance:
With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity….
The Complainant’s MARLBORO mark for cigarettes is well-known, and was well-known when the Respondent registered the disputed domain names. The Respondent had ample opportunity to assert its respective rights or legitimate interests in the disputed domain names, or to provide some explanation for their registration and use, but declined to participate in this proceeding. With the Respondent’s default, the Complainant’s contention that the Respondent is concealing its true identity is unchallenged. It is not necessary for the Panel to determine definitively the concealment issue. After consideration of all circumstances, the Panel concludes that the bad faith element under paragraph 4(a)(iii) of the Policy is present.
The third element is established.
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 <marlboro.blue> and <marlboro.red> be transferred to the Complainant.
Date: December 15, 2014