WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Hady Taniwan/ Personal

Case No. D2015-0331

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 Hady Taniwan/ Personal of Medan, Sumatera Utara, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <marlboroman.org> is 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 February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2015, 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 March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2015.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 13, 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

The Complainant manufactures, markets, and sells cigarettes in the United States of America, including cigarettes under its famous MARLBORO trademarks. MARLBORO cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955.

The Complainant is the registered owner of the following trademarks (the “MARLBORO Trademarks”), amongst others, on the Principal Register of the U.S. Patent and Trademark Office, which are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065:

MARLBORO Registration No.68,502, date registered April 14, 1908, goods: cigarettes;

MARLBORO and Red Roof Design Registration No. 938,510, date registered July, 25, 1972, goods: cigarettes.

True and correct copies of printouts of the registration certificates for these registrations have been provided to the Panel, together with printouts of updated status information for these trademarks.

The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO Trademarks throughout the United States of America, and has thus developed substantial goodwill in the MARLBORO Trademarks. Through such widespread, extensive efforts, the MARLBORO Trademarks have become distinctive and are uniquely associated with the Complainant and its products.

Indeed, numerous previous WIPO administrative panels already have determined 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”).

In addition, to the MARLBORO Trademarks listed above, for over half a century, the Complainant has also made extensive use of a specific “Western” theme in connection with its famous MARLBORO brand cigarettes. This includes, among other things, images of a cowboy set against Western landscapes, i.e., the “MARLBORO COUNTRY Trade Dress”.

The Complainant’s consistent use of its MARLBORO COUNTRY Trade Dress has been recognized as one of the longest-running, single-theme marketing campaign in United States of America history.

Indeed, the terms “marlboro” and “cowboy” have become virtually synonymous. As described in an article published in Advertising Age, the Complainant’s long-standing use of western imagery is:

“[t]he most powerful . . . brand image of the century” and “stands worldwide as the ultimate American cowboy and masculine trademark, helping establish Marlboro as the best-selling cigarette in the world. . . [O]ne measure of this icon’s clout is that no matter how minimal the imagery gets . . . it still remains instantly evocative of a mythical Marlboro country, of a mythical American cowboy, and of the No. 1 brand of cigarettes.”

A true and correct copy of this article has been provided to the Panel.

See also Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 1995) (noting that “Philip Morris by its packaging and advertising of MARLBORO cigarettes has created an image of the American West made up of geographical (‘Marlboro Country’) and individualized (the cowboy as the ‘Marlboro Man’) components” that is “inherently distinctive”).

For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

The Complainant markets its famous Marlboro cigarettes to age-verified adult smokers, 21 years of age or older, in various promotional materials including direct mail, Marlboro cigarette packs at retail, and online at “www.marlboro.com”.

The Complainant has registered the domain name <marlboro.com>. This domain name points to the Complainant’s website, “www.marlboro.com” (the “MARLBORO Website”), which, as noted above, enables access to information regarding the Complainant, MARLBORO-branded products, and special offers to age-verified adult smokers 21 years of age or older. True and correct printouts of the home page of the MARLBORO Website and the WhoIs record for the <marlboro.com> domain name have been provided to the Panel.

The Respondent registered the disputed domain name, which currently resolves to a blank page located at “www.marlboroman.org” (the “Respondent Website”) that reads “This Account Has Been Suspended”. A true and correct printout of the Respondent Website has been provided to the Panel.

On December 12, 2014, the Complainant sent a letter to the Respondent, demanding that the Respondent transfer the disputed domain name to the Complainant. This letter included a screen capture of the Respondent Website. At that time, the disputed domain name resolved to a web page that contained the term “index” and a link that read “cgi-bin.” A copy of the Complainant’s letter has been provided to the Panel.

The Complainant did not receive a response from the Respondent, who continues to hold the registration for the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

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

Through widespread, extensive use, the MARLBORO Trademarks have become uniquely associated with the Complainant and its products, and are well-known and famous throughout the United States as mentioned above.

The 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. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) paragraph 1.1, available at https://www.wipo.int/amc/en/domains/search/overview/index.html#11 (“If the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”); see also Roust Trading Ltd. v. AMG LLC, WIPO Case No. D2007-1857 (“Except in very unusual circumstances, Panels in administrative proceedings such as this will not look behind decisions of territorial trademark authorities who have accepted marks for registration; the fact of registration provides sufficient prima facie proof of a ‘right’ under paragraph 4(a)(i) of the Policy.”).

The disputed domain name is confusingly similar to the MARLBORO Trademarks. Courts and previous administrative panels have long recognized that 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); see also Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, at paragraph C.

Numerous previous administrative panels have held that a domain name is confusingly similar to a trademark where, as in the present case, the domain name incorporates the mark in its entirety. See, e.g., Philip Morris USA Inc. v. Pieropan, supra (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>). See also Am. Online, Inc. v. Yeteck Commc’n, Inc., WIPO Case No. D2001-0055 (noting “the adaptation of a recognized trademark in a Domain Name by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity.”)

Due to the fame of the MARLBORO Trademarks, the Respondent surely knew that the use of the disputed domain name would cause confusion among Internet users as to whether the Complainant was affiliated with the Respondent, or sponsored or endorsed the Respondent’s website. Indeed, addition of the term “man” to the MARLBORO mark is likely to actually increase consumer confusion.

As described above, the Complainant has for many years utilized its famous MARLBORO COUNTRY Trade Dress, which includes cowboys as a component. As a result, consumers have come to associate the MARLBORO COUNTRY Trade Dress, Western-themed brand imagery, and the cowboys exclusively with the Complainant and its products. Moreover, even if the combination of “Marlboro” and “man” was not significant, the addition of generic terms such as “man” to the Respondent’s disputed domain name does nothing to dispel the confusion. See, e.g., Research in Motion Ltd. v. Montego Diversified Media, WIPO Case No. D2009-0558(finding that addition of the term “movies” to complainant’s BLACKBERRY mark in the disputed domain name <blackberrymovies.com> did “not change the possibility of confusion” as “[m]any Internet users would suppose that the Domain Name refers to a website of or was authorized by the Complainant to sell downloadable movie services for BLACKBERRY.”); Lego Juris A/S v. Domain Mgmt., WIPO Case No. D2012-2476 (finding disputed domain name <legobatmanthemovie.com> was confusingly similar to the LEGO mark).

Further, as previous administrative panels have found, the addition of a generic Top-Level Domain name such as “.org” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

In addition to the traditional likelihood of confusion, the registration and use of the disputed domain name create a form of initial interest confusion: Internet users may be attracted to the Respondent’s website based on the Respondent’s use of the MARLBORO Trademarks. Courts and previous administrative panels have long recognized that 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 e.g. Lego Juris A/S v. wenjie, WIPO Case No. D2012-2439 (noting in support of domain name transfer that “people considering the disputed <legoarmy.com> domain name without awareness of its content may think that it is in some way connected and associated with the complainant: this situation is known as ‘initial interest confusion’ ”).

In the present case, the Respondent has incorporated the Complainant’s exact MARLBORO mark into the disputed domain name. An adult smoker desiring to learn more information about the MARLBORO brand may incorrectly assume that the disputed domain name corresponds to an official website of the Complainant. Having arrived at the Respondent’s website, adult smokers would be frustrated and confused when that is not the case. This type of “initial interest confusion” is illegal because the infringer has capitalized wrongfully on a trademark owner’s goodwill in its mark to divert Internet traffic to the infringer’s site. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (“[T]here is . . . initial interest confusion in the sense that, by using ‘moviebuff.com’ or ‘MovieBuff’ to divert people looking for ‘MovieBuff’ to its website, [the infringing party] improperly benefits from the goodwill that the [trademark owner] developed in its mark.”).

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent has no legitimate interests or rights in the disputed domain name.

The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO Trademarks.

The Respondent was never known by any name or trade name that incorporates the word “Marlboro.” On information and belief, the Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed could never do so given the Complainant’s pre-existing and exclusive rights to this mark throughout the United States of America.

The 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 the Respondent registered and began using the disputed domain name, or at any other time since.

The Respondent’s misappropriation of the Complainant’s marks by use of the exact MARLBORO mark in the disputed domain name is no accident. Clearly, the Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO Trademarks with the Complainant’s tobacco products. As one panel found in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at paragraph 6.2, when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,” and thus illegitimate “traders” such as the Respondent could have no legitimate interest in the trademark. In fact, a previous administrative panel commented that it was “inconceivable” for a respondent to have a legitimate use of a domain name incorporating the MARLBORO Trademarks “given the longtime use of the MARLBORO trademarks and strength of [the Complainant’s] brand.” Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790.

Additionally, several previous administrative panels applying the Policy have found that when a respondent, such as the Respondent in the present case, fails to make any use of the disputed domain name, merely pointing that domain name to an inactive website, such respondent has no rights or legitimate interests in the domain name. See, e.g., Philip Morris USA v. Gina Zeibert, WIPO Case No. D2014-0636 (finding “there is no evidence that Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services” and ordering the transfer of domain name <marlboromanecigs.com> to Complainant); Societe Nationale v. Isamel Leviste, WIPO Case No. D2009-1529 (noting that passive holding of a disputed domain name “does not constitute a legitimate use of such a domain name” that would give rise to a legitimate right or interest in the name).

(iii) The disputed domain name was registered and is being used in bad faith

The Respondent has registered the disputed domain name in bad faith.

The Respondent has registered the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in the MARLBORO Trademarks. Given the fame of the MARLBORO Trademarks, it is simply inconceivable that the registrant of the disputed domain name registered it without knowledge of the Complainant’s rights. Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was “inconceivable” that the respondent “was not aware of the MARLBORO trademarks”).

Given the fame of the Complainant’s MARLBORO Trademarks, it is simply inconceivable that the Respondent was unaware of the Complainant’s rights in the MARLBORO Trademarks and brand imagery.

Moreover, the fact that the Respondent did not reply to the Complainant’s December 12, 2014 letter is a further indication of bad faith. See Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266 (“The Panel finds the Respondent's conduct in failing to reply to the Complainant's cease and desist letter to be a compounding factor in bad faith.”).

The Respondent is using the disputed domain name in bad faith.

It is well-settled that the Respondent’s very method of infringement — using the exact MARLBOROTrademarks to divert Internet users from the Complainant’s true website — 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).

Moreover, as noted previously, the registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the use of the MARLBORO Trademarks. This is further evidence that the disputed domain name is being used in bad faith. 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).

This conclusion of bad faith is bolstered by the fact that the disputed domain name resolves to an inactive website. See Malayan Banking Berhad v. Beauty, Success & Truth Int’l, WIPO Case No. D2008-1393 (noting that an inactive website that has been “intermittent[ly] use[d]” is indicative of bad faith use).

B. Respondent

The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable as sertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademarks, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the Complainant’s MARLBORO Mark in its entirety, which makes the disputed domain name confusingly similar to this well-known and, indeed, famous Mark. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products marketed under its well-known and famous MARLBORO Mark.

The Panel agrees with the Complainant’s contention that confusing similarity has been found where, as in the present case, the Respondent has added, as a suffix, the generic word “man” to the Complainant’s MARLBORO Mark in the disputed domain name. See Saks & Co. v. saksfifthavenue-sale.com, WIPO Case No. D2013-1644. This addition does nothing to distinguish the disputed domain name from the Complainant’s well-known and famous MARLBORO Mark, but as argued by the Complainant and bearing in mind the MARLBORO COUNTRY brand imagery and marketing campaign mentioned above, on the contrary, adds to the confusion.

The Panel further agrees with the Complainant’s contention that the addition of the gTLD “.org” to the disputed domain name does not avoid confusing similarity for purposes of the Policy. This is relevant only for Internet registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all of the above, the Panel finds that the disputed domain name is identical and confusingly similar to the Complainant’s well-known and famous MARLBORO Mark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and interests including investment in lengthy commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. In particular, there is no evidence to show that the Respondent has been authorized or licensed to use the well-known and famous MARLBORO Mark as part of the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and famous MARLBORO Mark, which the Panel considers, as asserted above by the Complainant, was not by mere chance but with prior knowledge of the famous MARLBORO Mark of the Complaint, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is trading unfairly on the valuable goodwill that the Complainant has established in its trademark through prior and lengthy commercial use, as evidenced above.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, as mentioned above, the disputed domain name resolves to a website marked: “This Account Has Been Suspended”.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all of the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which evidence bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the disputed domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating therein in its entirety the Complainant’s well-known and famous MARLBORO Mark, is trading unfairly on the Complainant’s valuable goodwill established in such Mark.

Furthermore, see Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. In the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known and famous MARLBORO Mark and its prior, extensive and lengthy commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name which has the effect of redirecting Internet users interested in the Complainant’s products and services to the Respondent’s website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.

Furthermore, the failure of the Respondent to reply to the Complainant’s letter of December 12, 2014, is a further indication of bad faith. See Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all of these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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 <marlboroman.org> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: April 22, 2015