WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Tony Ali
Case No. D2015-0932
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Tony Ali of Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <marlborobud.com> (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 June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 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 June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. The Respondent filed an email communication with the Center on June 22, 2015 and confirmed this as his complete Response on June 23, 2015. On June 23, 2015, the Complainant filed an email communication with the Center. The Center notified the parties of the commencement of the Panel appointment process on June 24, 2015.
The Respondent filed an email communication on June 27, 2015, to which the Complainant replied on July 1, 2015. The Respondent filed a further email communication on July 6, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 2, 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 is a manufacturer, marketer and seller of cigarettes in the United States. It and its predecessor entities have traded and sold Marlboro cigarettes since 1883.
The Complainant is the owner of a number of trade marks consisting of the term "marlboro" (the "MARLBORO Mark") first registered in the United States in 1908. The Complainant has also registered the domain name <marlboro.com> that resolves to a website that provides information on and promotion of the Complainant's products to age-verified adults over 21 years of age.
The Domain Name, <marlborobud.com>, was registered on February 8, 2015. The Domain Name resolves to a website (the "Respondent's Website"), which consists of an inactive site with a cover statement being "Website Coming Soon. Please check back soon to see if the site is available".
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's MARLBORO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the MARLBORO Mark in the United States. The Domain Name consists of the MARLBORO Mark in its entirety. Numerous UDRP panels have held that domain names are confusingly similar to a trade mark where, as here, the domain names incorporate the mark in its entirety. See, e.g., Philip Morris USA Inc. v. PrivacyProtect.org / Pieropan, WIPO Case No. D2011-1735 (domain name <marlboroblackmenthol.com> was confusingly similar to the Complainant's MARLBORO Mark). In this case, the mere addition of the term "bud" to "marlboro" does not distinguish the Infringing Domain Name from the Complainant's MARLBORO Mark. See Philip Morris USA Inc. v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675 (ordering transfer of domain name <marlboroblack.com>).
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the MARLBORO Mark, nor does the Respondent appear to be commonly known by the Domain Name. The Respondent has made no active use of the Domain Name. Several panels applying the Policy have found that when a respondent, such as Respondent here, fails to make any use of a 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., Société nationale des télécommunications: Tunisie Telecomv. 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 right or legitimate interest in the domain name).
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name with full knowledge of the Complainant's well-known MARLBORO Mark and the fact that it significantly pre-dates the registration of the Domain Name. It is inconceivable that the Respondent would not have been aware of the MARLBORO Mark at the time of registration.
The Respondent has indicated that he wishes to operate a Canadian dispensary that offers medical marijuana produced by the Complainant under the name "Marlboro marijuana". The Respondent has provided no evidence to support his claim that he is entitled to use the Domain Name for this purpose. Such a proposed use of the Domain Name would be use in bad faith. Furthermore the Complainant has no intention of offering medical marijuana for sale.
The Respondent states it is associated with an organization that has signed paperwork with the Vancouver Government to operate a not-for-profit dispensary of medical marijuana. It has registered the Domain Name to offer future medical marijuana products from the Complainant through his dispensaries. Any statement by the Complainant that it does not intend to offer medical marijuana is obviously incorrect, as why else would it be interested in the Domain Name.
The Respondent has indicated that he is prepared to work with the Complainant either to distribute the Complainant's Marlboro-branded marijuana products in Canada or as a consultant to assist the Complainant in distributing medical marijuana. The Respondent has indicated that he is not trying to work independently of the Complainant but together.
6. Discussion and Findings
A. Supplemental Filing
Following the filing of the Response, the parties sent four additional communications with the Center, two by the Complainant, including a formal Reply, and two by the Respondent.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties".
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: "that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known of the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself."
The Panel has decided to allow each of these supplemental filings as they relate to matters in the original Response that the Complainant could not reasonably have known of the existence when it made its primary submission, namely the Respondent's professed intention to use the Domain Name to offer future medical marijuana products from the Complainant through its dispensaries.
B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the MARLBORO Mark, having registrations for MARLBORO as a trade mark in the United States.
The Domain Name consists of the MARLBORO Mark and the word "bud". The addition of a generic noun to the Domain Name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. The Panel finds that the Domain Name is confusingly similar to the Complainant's MALRBORO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. If such a prima facie case is made out, then the burden of production shifts to a respondent to demonstrate rights or legitimate interests in a domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate [respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [respondent] of the dispute, [respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent has] acquired no trademark or service mark rights; or
(iii) [respondent is] making [a] legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the MARLBORO Mark or a mark similar to the MARLBORO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name for a legitimate noncommercial use. Rather the Respondent's statement is that it proposes to use the Domain Name to operate a website for the distribution of the Complainant's supposed medical marijuana products.
The Response contains no evidence to show any demonstrable preparations to use the Domain Name for his asserted purpose including that it is authorised to sell medical marijuana in Canada. Furthermore, the Complainant denies that it has any intention to offer medical marijuana for sale under the MARLBORO Mark and the Response contains no evidence that would suggest otherwise. Finally, even if the Complainant were to offer medical marijuana for sale under the MARLBORO Mark, the Respondent's use of the Domain Name would not be use in connection with a bona fide offering of goods or services as the Complainant has not entered into any agreement or authorized the Respondent to use the MARLBORO Mark as a domain name for the purposes of the sale of their (at this stage, entirely hypothetical) goods.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name' registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the MARLBORO Mark at the time the Domain Name was registered. The Response indicates that the Domain Name was registered in anticipation of the Complainant using its MARLBORO Mark to sell medical marijuana with the aim of selling the Complainant's products. The registration of the Domain Name in awareness of the MARLBORO Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Domain Name is currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that a panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the Respondent has indicated that he is holding the Domain Name until the Complainant commences offering medical marijuana for sale whereupon he hopes to offer a site offering medical marijuana for sale under the MARLBORO Mark.
The Panel finds that the Respondent is holding the Domain Name with the intention, should the Complainant ever commence the sale of medicinal marijuana under the MARLBORO Mark of either:
a) using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the MARLBORO Mark as to the source, sponsorship, affiliation or endorsement of its website; or
b) attempt to sell, rent, or otherwise transfer the Domain Name' registration to the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name, the valuable consideration being his engagement by the Complainant as a distributor or consultant for its products.
Regardless of whether the Complainant ever releases medical marijuana under the MARLBORO Mark and/or chooses to enter into business dealings with the Respondent, the Respondent, without the permission of the Complainant or any rights of his own, is holding the Domain Name with the express purpose of benefiting from the presence of the MARLBORO Mark in the Domain Name and any confusion that arises therein. The Panel on balance finds that such conduct amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <marlborobud.com>, be transferred to the Complainant.
Date: July 7, 2015