WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Gabriel Hall
Case No. D2015-1779
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States") represented by Arnold & Porter, United States.
Respondent is Gabriel Hall of Garden City, Idaho, United States.
2. The Domain Name and Registrar
The disputed domain name <iownmarlboro.com> 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 October 6, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 10, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 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
Complainant manufactures, markets and sells cigarettes in the United States. Complainant and its predecessors have been making and selling cigarettes under the MARLBORO brand since 1883.
Complainant owns multiple United States federal trademark registrations, including Reg. Nos. 68,502 and 938,510, for its MARLBORO mark. These two trademarks were registered on April 14, 1908 and on July 25, 1972 respectively, and have become incontestable. Complainant also owns the domain name <marlboro.com> and operates its website through this domain name.
The disputed domain name was registered on June 24, 2015 and expires on June 24, 2016.
5. Parties' Contentions
Complainant states that its MARLBORO mark has become famous and that it has developed substantial goodwill in the MARLBORO mark through substantial time, widespread and extensive effort, money, advertising and promotions throughout the United States. Complainant asserts that the disputed domain name is confusingly similar to the MARLBORO mark because it incorporates the mark in its entirety, and the addition of the generic words "I" and "own" do not serve to distinguish the disputed domain name from the MARLBORO mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has no connection or affiliation with Complainant, has never been known by any name or trade name that incorporated the word "Marlboro", has not sought or obtained trademark registrations containing "Marlboro" and has not been authorized by Complainant to use the MARLBORO mark.
Complainant further alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and that the disputed domain name was intentionally registered to divert Internet users away from Complainant's true website.
Regarding bad faith registration, Complainant alleges that knowledge on the part of Respondent can be inferred due to Complainant's well-known mark. Regarding bad faith use, Complainant alleges that Respondent registered the disputed domain name to divert Internet users from Complainant's true website by creating initial interest confusion, and that passive holding is evidence of bad faith in this case.
Respondent did not respond to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the MARLBORO mark in view of its trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the MARLBORO mark because it incorporates the entirety of the trademark. The addition of the words "I" and "own" does not differentiate the disputed domain name from Complainant's mark. See, e.g., Am. Online, Inc. v. Yeteck Commc'n, Inc., WIPO Case No. D2001-0055.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence of record supports Complainant's unrebutted allegations that Respondent is not authorized to use the MARLBORO mark, is not affiliated with Complainant and is not known by that name. Passively holding a domain name does not constitute a bona fide offering of goods or services. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding bad faith registration, the Panel finds that Complainant's MARLBORO mark has been registered since April 14, 1908, more than one hundred years prior to the date that the disputed domain name was first registered. It is therefore highly unlikely that Respondent was unaware of the MARLBORO mark and Complainant's rights when it registered the disputed domain name.
Regarding bad faith use, the Panel finds that the disputed domain name likely diverts Internet traffic away from Complainant's true websites and is being passively held. Passive holding of the disputed domain name coupled with the fame of Complainant's mark evidences bad faith. "It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)." Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. Complainant has therefore made a showing of bad faith use.
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 <iownmarlboro.com> be transferred to Complainant.
Lawrence K. Nodine
Date: November 29, 2015