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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Christian Smith

Case No. D2014-1913

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.

The Respondent is Christian Smith of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <marlbororedecig.com> and <marlboroecig.org> 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 October 29, 2014. At that time the Complaint only concerned the domain name <marlbororedecig.com>. On October 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 4, 2014.

On November 10, 2014, the Center informed the Complainant that it would allow the Complainant's request to add the domain name <marlboroecig.org> to the initial Complaint and to file an amended Complaint including both domain names, once the Registrar confirmed to the Center the registrant's details. On November 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is also listed as the registrant of <marlboroecig.org> and providing the contact details. Therefore, on November 10, 2014 the Center finally allowed the Complainant to formally add the domain name to the Complaint. In that respect, the Complainant filed an amended Complaint on November 11, 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 November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2014. Multiple Responses were filed with the Center before the due date. After the due date the Respondent submitted two supplemental filings, the first one on December 11, 2014 and the second one on December 17, 2014.

The Center appointed Alfred Meijboom as the sole panelist in this matter on December 11, 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 an American company that manufactures, markets, and sells cigarettes, including cigarettes under the MARLBORO trademark. The Complainant is the owner of, inter alia, the following US trademark registrations (hereinafter the "Trademarks"):

MARLBORO, registered under number 68,502 for cigarettes on April 14, 1908;

MARLBORO and Red Roof design, registered under number 938,510 for cigarettes on July 25, 1972.

The Complainant is also the holder of the domain name <marlboro.com>.

The Respondent is an entrepreneur, holding a large number of domain name registrations, including the disputed domain names. The disputed domain name <marlbororedecig.com> was registered on May 2, 2014, and the disputed domain name <marlboroecig.org> on November 6, 2014.

5. Parties' Contentions

A. Complainant

According to the Complainant the disputed domain names are confusingly similar to its famous Trademarks, as the disputed domain names incorporate the Trademarks in their entirely. The addition of ".com" is irrelevant in that respect. Also the addition of the generic words "red", a color, and "ecig", a common abbreviation for electronic cigarette, does not dispel the confusion with the Trademarks. On the contrary, the addition of "ecig" exacerbates this confusion as it appeals to adult smokers who are interested in alternatives to traditional cigarettes. In that context, the public may be misled into believing that the Complainant is manufacturing and selling an electronic cigarette under the Trademarks. Moreover, in addition to the traditional likelihood of confusion the Complainant argues that the disputed domain names create a form of initial interest confusion, which attracts Internet users to the disputed domain names based on the Trademarks. After all, consumers expect domain names incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner.

Furthermore, the Complainant claims that the Respondent does not have legitimate interest or rights in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, its affiliates or any of its products. He was never known by any name of trade name that incorporates the word "Marlboro", nor has he sought or obtained any corresponding trademark registration. The Respondent has also not received any license, authorization, or consent to use the Trademarks. According to the Complainant the inclusion of the Trademarks in the disputed domain names is no accident. The Respondent chose to use these Trademarks to divert Internet users from the Complainant's website by capitalizing on the public recognition of the Trademarks. The Complainant also notes that the Respondent does not make any use of the disputed domain names.

To conclude, the Complainant argues that the Respondent has registered and is using the disputed domain names in bad faith. Given the fame of the Trademarks it is inconceivable that the Respondent registered the disputed domain names without knowledge of the Trademarks. According to the Complainant it is well-settled that the Respondent's very method of infringement – using the Trademarks to divert Internet users from the Complainant's true website – demonstrates bad faith under the Policy. Moreover, the Complainant also in this respect contends that the registration and use of the disputed domain names creates a form of initial interest confusion. According to the Complainant the conclusion of bad faith is bolstered by the fact that the disputed domain names resolve to inactive websites. Finally, the Complainant purports that the Respondent must have expected that any use of the disputed domain names would cause harm to the Complainant, as the disputed domain names are so obviously indicative of the products sold by the Complainant that Respondent's use of the disputed domain names would inevitably lead to confusion of some sort.

B. Respondent

The Respondent has submitted multiple – extensive – responses, which in the essence boil down to the following.

The Respondent alleges that – with the knowledge he received – he purchased the disputed domain names in good faith. The Respondent alleges that if the thought of purchasing something in good faith is in the forethought of a purchase, such purchase cannot be made in bad faith. In this respect, the Respondent also puts forward that the disputed domain names were free and available for registration. The Respondent is currently building up a legitimate business that consists of exploiting websites through the disputed domain names and other domain names such as <britishamericanecig.com>, <iphoneadapters.com>, and <sonosvsairplay.com>. The Respondent explains that he remembered the flavor of Marlboro and that he searched for trademarks online because he was not certain if he could use "Marlboro(redecig)" for a domain name. He found a site where he could check terms which were intended to be used, and this site allowed registration of the term "marlboroecig" as a trademark. Moreover, the Respondent learned that duplicate trademarks for different products and services can co-exist. In that context, the Respondent presumed that he could also register and use the disputed domain names for selling electronic devices, flavored e-cigarettes, batteries, atomizers and anything to do with e-cigarettes. The Respondent states that he actually intends to use the disputed domain names for offering such products. In that respect, he refers to his website "www.britishamericanecig.com" where he already sells such products. According to the Respondent e-cigarettes differ from the Complainant's products, as they are not cigarettes but a healthy alternative to cigarettes.

6. Discussion and Findings

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, the Panel first needs to address the Respondent's supplemental filings.

A. Supplemental filings

The Respondent submitted two supplemental filings. The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies: the transfer or cancellation of a disputed domain name. These remedies are without prejudice to a fuller exploration of the evidence and the parties' rights in a judicial proceeding. Accordingly, the Rules and Supplemental Rules provide only for a complaint and a response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel itself (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding "with due expedition" and empowers the Panel to "determine the admissibility, relevance, materiality and weight of the evidence." Consequently, panels are reluctant to countenance delay through additional rounds of pleading and require some showing of "exceptional circumstances". Panels typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, and cases cited therein. "Exceptional circumstances" typically involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198; Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097.

In this case, the supplemental filings do neither claim nor show exceptional circumstances which would reasonably require the Panel to accept such filings. Hence, the Panel will not consider the supplemental filings as part of the record in this proceeding. In any event, even if considered these, would not have affected the outcome of this case.

B. Identical or Confusingly Similar

It is established case law that the generic Top Level Domain (gTLD) ".com" may be disregarded in assessing whether a domain name is identical or confusingly similar to a trademark (e.g. Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

The Complainant's Trademarks are well-known. This has not been challenged by the Respondent and it has also has been accepted by numerous panels previously, including Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735, Philip Morris USA Inc. v. Jennifer Worden, WIPO Case No. D2014-1201. The Trademarks are reproduced in their entirety in the disputed domain names. The Panel also finds that the additions of "red" and "ecig" do not sufficiently distinguish the disputed domain names from the Trademarks.

Accordingly, the Panelist finds that the first requirement of paragraph 4(a) of the Policy has been satisfied.

C. Rights or Legitimate Interests

The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Complainant's Trademarks. The Respondent is not known under the disputed domain names, nor does it have any trademark rights in that respect. Furthermore, the disputed domain names are not being used.

In this context, and as further discussed below, the Panel finds that the Respondent does not have rights or legitimate interest in the disputed domain names.

D. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy include circumstances that shall be evidence of the registration and use of a domain name in bad faith, which are, however, not exhaustive and bad faith may be found alternatively. In the present case the Panelist holds that the Respondent has registered and uses the disputed domain names in bad faith for the following reasons.

The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may as such be an indication of bad faith (e.g. Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1586; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). As indicated, also in the present case the Trademarks are well-known, while they predate the registrations of the disputed domain names. The Respondent admitted that he was actually aware of the Complainant and the Trademarks when registering the disputed domain names. Furthermore, the Respondent does not have a plausible explanation for incorporating the Trademarks into the disputed domain names. On the contrary, the Respondent has explicitly indicated that he is intending to use the disputed domain names for offering e-cigarettes and relating accessories which are highly similar to the products which the Complainant sells under the Trademarks. This and especially the fact that the Trademarks are well-known also make that the current non-use of the disputed domain names does not prevent the finding of bad faith (cf. WIPO Overview 2.0., paragraph 3.2, and for example Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393). It can be assumed that by registering and by the explicitly intended use of the disputed domain names, the Respondent will intentionally attempt to attract, for commercial gain, Internet users to his web sites, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its web sites and/or of products on his web sites.

The requirement of bad faith registration and use of the disputed domain names pursuant to paragraph 4(a)(iii) of the Policy has therefore also been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the disputed domain names <marlbororedecig.com> and <marlboroecig.org> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: December 25, 2014

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