WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. George Liarakos
Case No. D2015-1789
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 George Liarakos of Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <malboro.xyz> 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 7, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2015. On November 5, 2015 the Center received by email a communication from the Respondent stating their willingness to transfer the disputed domain name. On November 12, 2015 the Complainant requested the suspension of the proceedings. On November 13, 2015 the Center notified the suspension of the proceedings. On December 14, 2015 the Complainant requested the reinstitution of the proceedings. The Center notified the reinstitution of the Proceedings on December 14, 2015.
In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2015.
The Center appointed Pablo Palazzi as the sole panelist in this matter on January 11, 2016. 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 well- known manufacturer and supplier of tobacco products, being in a business supplying products under trademarks incorporating the word "Marlboro" since, or the successor in title to a business using such trademarks begun in, 1883.
The Complainant has rights over the MARLBORO and MARLBORO and design marks in the United States.
The Complainant is the registrant of the domain name <marlboro.com> which was created on March 6, 2000.
The disputed domain name was created on August 11, 2015.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to its well-known and distinctive trademark MARLBORO.
According to the complaint, the disputed domain name includes an obvious and deliberate misspelling of the famous MARLBORO trademark, i.e., "MALBORO", which omits the "r" between "a" and "l". The Complainant argues that this is this is a case of typosquating.
The Complainant states that the addition of the top level domain name ".xyz" is irrelevant when determining whether a domain name is confusingly similar to a protected mark, citing Philip Morris USA Inc. v. Sakaria Mohamoud mussafah, WIPO Case No. D2014-1667.
The Complainant further asserts that the Respondent is not licensed by it and has never shown any legitimate use of the disputed domain name.
The Complainant argues that it is "inconceivable" that the Respondent could have been unaware of the trademark significance of the disputed domain name and of the Complainant's rights in its trademarks, simply by virtue of the international reputation of the Complainant and its MARLBORO trademarks going back many decades. In those circumstances, the Complainant concludes, the registration, and the subsequent use of the disputed domain name simply to attract offers for purchase of it, is "paradigmatic" bad faith.
The Complainant states that by registering <malboro.xyz> the Respondent intentionally attempted to attract Internet users to his website for commercial gain. According to the Complaint, the current website to which the disputed domain name leads states: "This Web page is parked FREE, courtesy of [sic] GoDaddy.com GoDaddy.com". The Complaint states that he Respondent intends to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent's website by creating, in the near future, a likelihood of confusion with the Complainant's Trademarks as to source, sponsorship, or endorsement by Philip Morris USA Inc. of the Respondent's website or a product or service sold on the Respondent's website.
In addition, the Complainant states that 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. According to the Complaint, this conclusion of bad faith is bolstered by the fact that the disputed domain name resolves to a parking page. The Complainant states that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") likewise supports the view that passive holding of a domain name pointing to an inactive site might well be a sign of bad faith, particularly in circumstances where, as here, the Complainant has a well-known mark that the Respondent has misappropriated.
The Complainant cites many compelling authorities in support of the propositions that it makes which the Panel does not repeat here.
The Complainant requests that the disputed domain name is transferred to it.
The Respondent did not reply to the Complainant's contentions. The Respondent sent an email to the Center on November 5, 2015 stating that the disputed domain name was purchased with the intent to be used as a dental website for a business located near Marlboro Park.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in MARLBORO as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name <malboro.xyz> is confusingly similar to the Complainants' trademark MARLBORO. The disputed domain name uses the term "malboro" which is confusingly similar to the trademark MARLBORO but without the letter "r".
Such insignificant modifications to trademarks are commonly referred to as "typosquatting". A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see section 1.10 of the WIPO Overview 2.0).
The addition of the generic Top-Level Domain ("gTLD") ".xyz" is irrelevant when determining whether a domain name is confusingly similar to a protected mark (see Philip Morris USA Inc. v. Sakaria Mohamoud mussafah, WIPO Case No. D2014-1667).
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview 2.0, section 2.1).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product."
These criteria are not exclusive and the Panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and used the disputed domain name in bad faith.
As an initial matter, the Respondent's mere act of typosquatting presents ample evidence of bad faith in the circumstances of this case (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302).
In addition, taking into consideration that the use and registration of the MARLBORO trademark preceded the creation of the disputed domain name by more than a century and that the MARLBORO trademark is well-known and recognized (Philip Morris USA Inc. v. Odd Hunter, WIPO Case No. D2015-1831 and Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779), this Panel is of the view that the Respondent must have been aware of the existence of Complainant's trademark at the time it obtained the registration of the disputed domain name.
Although Respondent sent an email to the Center on November 5, 2015 stating that the disputed domain name was purchased with the intent to be used as a dental website for a business located near Marlboro Park this mere assertion is found to be pretextual, and the Panel notes that such argument has not been supported by any evidence. Thus the overall evidence in the file indicates that the Respondent's choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of the Complainant's trademark, which denotes bad faith.
Regarding bad faith use, the Panel finds that the disputed domain name likely diverts Internet traffic away from the Complainant's true websites and is being passively held. Passive holding of the disputed domain name coupled with the fame of the 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)".
In light of the above, this Panel finds that the Complainant has satisfied 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 disputed domain name <malboro.xyz> be transferred to the Complainant.
Date: January 22, 2016