WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL
Case No. D2014-2264
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondents are Jose Vicente Gomar Llacer and Gandiyork SL of Valencia, Spain (collectively, the “Respondent”), internally represented.
2. The Domain Name and Registrar
The disputed domain name <marlboro.land> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 Respondent of the Complaint, and the proceedings commenced on January 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015. The Response was filed with the Center on January 26, 2015.
On February 5, 2015, the Center received Complainant’s reply to Respondent’s Response.
On February 11, 2015, the Center received by email Respondent’s reply to Complainant’s comments on the response.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on February 11, 2015. 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
According to the Registrar, the Domain Name was registered on March 6, 2014.
5. Parties’ Contentions
Complainant states that it manufactures, markets and sells cigarettes in the United States, including cigarettes under its MARLBORO trademarks, and these have been sold by it (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
Complainant further states that it is the registered owner of the MARLBORO trademark, registered in 1908, and the MARLBORO and Red Roof design trademark, registered in 1972 (the “MARLBORO Trademarks”)
Complainant asserts that it has spent substantial time, effort and money advertising and promoting the MARLBORO Trademarks throughout the United States, and it has developed substantial goodwill in the MARLBORO Trademarks. To this end Complainant contends that through such widespread, extensive efforts, the MARLBORO Trademarks have become distinctive and are uniquely associated with Complainant and its products.
Complainant contends that it has valuable trademark rights in its MARLBORO Trademarks and uses these trademarks in connection with several variations of its MARLBORO brand cigarettes.
Complainant has also registered the domain name <marlboro.com>. This domain name points to Complainant’s website “www.marlboro.com” (the “MARLBORO Website”), which enables access to information regarding Complainant’s MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.
Complainant asserts that Respondent’s Domain Name is confusingly similar to the MARLBORO Trademarks as it incorporates the mark in its entirety in that it consists of “marlboro” as the second level domain name, combined with the new generic Top-Level Domain “.land”.
Complainant stresses that Respondent has no legitimate rights or interests in the Domain Name as it has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO Trademarks. As far as Complainant is aware, Respondent was never known by any name or trade name that incorporates the word “Marlboro” and on information and belief, Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. Complainant states that Respondent has not received any license, authorization, or consent, either 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 Domain Name, or at any other time since and in addition, the WhoIs record associated with the Domain Name does not identify Respondent by the name “marlboro.land.”
Complainant submits that Respondent’s misappropriation of the MARLBORO mark by its inclusion in the Domain Name is no accident and believes that Respondent chose to use this trademark to divert Internet users from Complainant’s website by capitalizing on the public recognition of the MARLBORO Trademarks.
Complainant contends that Respondent has registered the Domain Name in bad faith as it must have known of Complainant’s rights in the MARLBORO Trademarks at the time of registration due tothe fame of its MARLBORO Trademarks. Complainant notes that had a simple Internet search been carried out it 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 theUnited States Patent and Trademark Office (USPTO) records that are readily accessible online.
Finally, Complainant contends that registration and use of the Domain Name it likely to create initial interest confusion, which attracts Internet users to the Domain Name based on the use of the MARLBORO Trademarks, which Complainant submits is further evidence that the Domain Name is being used in bad faith, along with the fact that the Domain Name resolves to an inactive website.
Respondent states that Complainant failed to buy the Domain Name when it became available, but contends that Complainant is now using the UDRP process to obtain it.
Respondent asserts that whilst MARLBORO is a trademark for Class 34, it does not have exclusivity of use in the other classes. Respondent contends that the Domain Name is dedicated to land and real estate transactions in Marlboro, New Jersey, in Class 36. Respondent argues that Complainant’s mistake is to invest in a brand name which is also a location name as there are hundreds of brands using location names, but it cannot avoid that many other businesses in the same location use the location name.
Respondent asserts that new gTLDs have been created to enable people living in any area, such as Marlboro, to be able to use their name for multiple activities and products, other than tobacco, for example <marlboro.construction>, <marlboro.plumbing>, <marlboro.farm>, etc., and the fact that a geographical name is registered for tobacco activity does not grant exclusivity of use for all other activities.
Respondent states that it acquired the Domain Name prior to Complainant buying a Domains Protected Marks List (“DPML”) block, which is a package consisting of all the new gTLDs.
Respondent contends that the parties exchanged three emails prior to the Complaint being lodged. In the first email Complainant alleged that Respondent may be using the Domain Name in a way that is infringing Complainant’s trademark and requested the Domain Name be transferred to Complainant. Respondent says it responded to this email stating that it is not infringing and will not infringe the trademark because it is building websites for the real estate trade.
Respondent says further that it outlined in a second email to Complainant that it had acquired over a dozen geographical names in the area for the purpose of developing websites, and that Complainant responded stating that Respondent had no right to use “Marlboro” in a domain name just because it is a geographical name, giving as an example a case where the company HardRock won against a party who had the domain name <hardrockmassachussets.com>. Respondent asserts that Complainant also alleged Respondent had attempted to sell the Domain Name to Complainant.
Respondent asserts that it is a partnership between two peers in a 2012 Master of Business Administration program (MBA), with one Spanish partner residing in Gandia and the other from New Jersey residing in New York, and thus the name of the company was created, Gandiyork, S.L.
Respondent denies that it is benefiting from Internet traffic searching tobacco when its page is not yet online. It also denies that it is infringing a trademark for only one class, only related to tobacco, when its business is not related to it and belongs to another class.
Respondent denies that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant, as the alleged owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name.
Respondent further denies that the Domain Name was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name and that it has engaged in a pattern of such conduct.
Respondent states that it only bought <marlboro.land> and not any other extensions.
Respondent asserts that Complainant and Respondent are not competitors and the Domain Name was not registered primarily to disrupt Complainant’s business, nor was it registered in an intentional attempt to attract for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
It is alleged this is because its activity is real estate in Marlboro, New Jersey.
C. Complainant’s Response
Complainant responded to Respondent’s response asserting that Respondent is a known cybersquatter that has registered more than 1,00 (sic) domain names, many of them including the gTLD “.land” and 1047 other domain names, including numerous “.land” domain names, identical to well-known trademarks, including <decathlon.land>, <mercadona.land>, <rewe.land>, <lidl.land>, <carrefour.land>, <adidas.land>, <cocacola.land>, <marlboro.land>and <pepsi.land>.
Complainant refutes Respondent’s argument that it registered <marlboro.land> for use in connection with land and real estate transactions and are building websites for real estate trade, as Complainant has found no evidence that Respondent is engaged in real estate activities and Respondent provided no such evidence to support its claim and the Domain Name resolves to a blank page.
Complainant also refutes Respondent’s claim that its registration of <marlboro.land> has geographic significance because its activity is real estate in Marlboro, New Jersey, as Respondent has provide no facts to support this claim, and there is no evidence that one of the Respondents is from New Jersey as asserted and Respondent’s filing lists its address in Spain.
Complainant acknowledges Respondent’s claim that it does not infringe Complainant’s rights because Respondent’s business is not in the tobacco field, however Complainant contends that Respondent ignores the well-established protection afforded famous trademarks such as MARLBORO, which extend to the domain name context. By way of example Complainant notes that, in finding bad faith on the part of a respondent who registered a “Barbie” domain name, a panel stated “By registering and using the <barbie365.com> in the manner it has, Respondent has diluted the distinctive quality of the BARBIE Marks. Such use lessens the mark's capacity to identify Complainant’s products and services and thereby violates the U.S. Anti-Dilution Act, 15 U.S.C. § 1125(c).” (Emphasis added). Mattel, Inc. v. Norman Abel Camac Contreras, NAF Claim No. 1442630.
Complainant notes Respondent’s objection to Complainant’s use of the DPML offered by the Donuts registry but says further that the DPML is a legitimate tool that Donuts offers to trademark owners to guard against cybersquatters, such as Respondent, from registering their trademarks as second level domains.
Complainant points out that the email exchange Respondent appended to its response, rather than supporting its case, in face demonstrates that Respondent attempted to sell the Domain Name to Complainant, which Complainant suggests it evidence that Respondent has no intention of putting the Domain Name to use.
D. Respondent’s reply
Respondent defended its position by email claiming that Complainant has proffered new arguments in its supplemental submission. In its defence Respondent acknowledges that it has had other complaints brought against them, which it has lost, however asserts that the complainants that won had said they needed the domain for their international expansion, which Complainant in this Complaint did not say.
Respondent argues that it has in some cases bought brands by mistake, and asserts that in those cases it would not be paying renewal fees for them and are either giving them for free to the brand owners or dropping them out after the one year expiration date.
Respondent confirms that it does not do real estate activity but assert that its activities have been since its constitution, “the development, construction, sale and rental of urban and rural property”, and that later on it expanded its business on the Internet.
Respondent acknowledges that it is not physically established in New Jersey, rather one partner is from New Jersey, living in New York and offered further details if requested by the Panel.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant is the registered owner of the MARLBORO trademark, registered in 1908, and the MARLBORO and Red Roof design trademark, registered in 1972.
The evidence is clear, that Complainant has for many years used and sought protection for the MARLBORO Trademarks in connection with tobacco and smoking-related products. Complainant and its predecessors have used earlier versions of the MARLBORO Trademarks since 1883, and since 1955 used the more modern version or versions of the mark.
The Panel accepts that the MARLBORO Trademarks are exclusively associated with Complainant. It is apparent that by virtue of its widespread and long-standing use and the repute of the MARLBORO Trademarks that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is confusingly similar to the MARLBORO Trademarks as it incorporates the mark in its entirety. That is, on the basis that it consists of “marlboro” as the second level domain name, combined with the new “.land” gTLD.
The addition of the “.land” gTLD has no material influence on the assessment of the similarity between the Domain Name and Complainant’s MARLBORO Trademarks. In this particular case, Complainant asserts that Respondent is passively holding and not actually using the Domain Name. At present, the Domain Name resolves to a blank/inactive page. Notwithstanding the above the primary question is whether the Domain Name is identical or confusingly similar to a mark or name in which Complainant has rights.
In this particular case the Panel finds:
a) Complainant has rights in respect of the MARLBORO Trademarks.
b) The Domain Name is identical to the MARLBORO Trademarks or alternatively is at least confusingly similar thereto.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Respondent’s contention in relation to its use of the “.land” gTLD is that even though it is not involved in real estate activity as such, it has since its inception been involved in the development, construction, sale and rental of urban and rural property.
In relation to the “marlboro” element Respondent contends that notwithstanding the fact it is not physically established in New Jersey, the state within which the town of Marlboro exists, one partner is from New Jersey but lives in New York. Therefore, even accepting Respondent’s argument at its highest, there is no suggestion that Respondent or either partner constituting Respondent, has any real connection with the town of Marlboro (as opposed to the state of New Jersey) whether by way of residence or business connection.
Respondent argues that new gTLDs were created to enable people living in any area, such as Marlboro, to be able to use their name for multiple activities and products, other than tobacco, for example <marlboro.construction>, <marlboro.plumbing> etc. There might have been some merit in this argument if Respondent could point to a genuine connection with the town of Marlboro and was able to point to some justifiable need to use “Marlboro” as part of the “.land” TLD. There is however no evidence of this.
The next argument raised by Respondent is that a geographical name registered for tobacco activity does not grant exclusivity of use for all other activities. Once again this argument may have merit. However, it ignores the fact that the MARLBORO Trademarks are very well known and Respondent has not shown any evidence of a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain (or tarnishment of the relevant trademark).
Complainant contends that since Respondent is not commonly known by the MARLBORO Trademarks, is not in any way affiliated with Complainant, nor authorized or licensed to use the MARLBORO Trademarks there is no legitimate use of the Domain Name. The Panel finds that in the absence of any license or permission from Complainant to use such a well-known trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed.
Equally, Respondent has failed to demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. As a result, apart from unsupported legal submission, there is no evidence to show that Respondent has any intention of non-commercial or fair use of the Domain Name.
Under the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent has no license or permission to use such a well-known trademark and that Respondent has not demonstrated use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, the Panel infers that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase or partake in Complainant’s well-known branded tobacco and smoking-related goods.
In its response Complainant alleged that Respondent is a known cybersquatter who has registered more than 1,00 (presumably this should be 1,000) domain names, many of which include the “.land” gTLD and 1047 other domains, including numerous “land” domain names, incorporating well-known trademarks, including inter alia, <adidas.land>, <cocacola.land> and <pepsi.land>.
This is unlikely to be coincidental and allows the inference to be drawn that Respondent intends to secure domain names which include world-famous international brands and to take advantage of Internet users who know and trust these brands.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s MARLBORO Trademarks significantly pre-date Respondent’s registration of the Domain Name and in light of the long-established and widespread use and the protection of the MARLBORO Trademarks that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus concludes that the third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboro.land> be transferred to Complainant.
Clive L. Elliott QC
Date: February 25, 2015