WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Odd Hunter
Case No. D2015-1831
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("US"); represented by Arnold & Porter LLP of US.
Respondent is Odd Hunter of Lac, Albania.
2. The Domain Name and Registrar
The disputed domain name is <marlborolife.info> which 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 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 proceeding commenced on October 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. On October 27, 2015, the Center received from Respondent's email address an email communication. Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to appoint a panel in this matter on November 17, 2015.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 26, 2015. This Panel finds that it was properly constituted. This 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 has rights over the MARLBORO and MARLBORO and design marks for which it holds (i) trademark registration No. 68502 with the United States Patent and Trademark Office ("USPTO"), registered on April 14, 1908 in class 34, with stated first use in commerce in 1883, and (ii) trademark registration No. 938510 with the USPTO, registered on July 25, 1972 in class 34, with stated first use in commerce in 1954, respectively.
Complainant is the registrant of the domain name <marlboro.com> which was created on March 6, 2000.
The disputed domain name was created on July 7, 2015.
5. Parties' Contentions
Complainant's assertions may be summarized as follows.
Since 1883 Complainant (and various predecessor entities) has manufactured and sold cigarettes under its famous MARLBORO trademarks, 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 has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks, and Complainant 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 Complainant and its products. Numerous UDRP panels have already determined that the MARLBORO trademarks are famous.
The disputed domain name is confusingly similar to the MARLBORO trademark. Courts and UDRP 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. Numerous panels have held that a domain name is confusingly similar to a trademark where the domain name incorporates the mark in its entirety.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO trademarks, and has not received any license, authorization or consent to use the MARLBORO trademarks in a domain name or in any other manner. Respondent was never known by any name or trade name that incorporates the word "Marlboro", and has never sought or obtained any trademark registration for "Marlboro" or any variation thereof.
Before any notice to Respondent of this dispute, there is no evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Respondent is making a commercial use of the disputed domain name with intent for commercial gain, including paid advertising. Respondent chose to use the MARLBORO trademark to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO trademarks.
When a complainant's trademark is distinctive, illegitimate users such as Respondent could have no legitimate interests in the trademark.
Respondent has registered the disputed domain name in bad faith by doing so with full knowledge of Complainant's rights in the MARLBORO trademarks: MARLBORO has been in use since 1883 and was registered in the US in 1908, whereas the disputed domain name was registered over a century later, on July 7, 2015.
A simple Internet search would have revealed Complainant's extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. Complainant's rights would also have been obvious through basic domain name searches, Internet searches and searches of the USPTO records that are readily accessible online.
The WhoIs record for Respondent includes false contact information, i.e., an incomplete or nonexistent street address and a nonexistent postal code, 50000. Based on an Internet search, postal codes in Albania are four digits rather than five; the postal code "5000" corresponds to the Berat district, not to an area called "Lac"; and "Lac" is in the municipality of Kurbin, Albania, not in the province of "Lac". Respondent's use of certain apparent false contact information in the WhoIs record for the disputed domain name further supports a finding that the disputed domain name was registered and is being used in bad faith.
Respondent is using the disputed domain name in bad faith. It is well-settled that Respondent's very method of infringement (using the exact MARLBORO trademark to divert Internet users from Complainant's true website) demonstrates bad faith use under the Policy.
By registering the disputed domain name, Respondent intentionally attempted to attract Internet users to its website for commercial gain. The website associated to the disputed domain name provides, in addition to erotic images, click-through links to paid advertising for educational programs, which evidences bad faith. The display of erotic images on the website linked to the disputed domain name only serves to underscore Respondent's bad faith by tarnishing Complainant's image associated with the MARLBORO trademarks.
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, which is further evidence that the disputed domain name is being used in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not file a formal Response. However, as noted above, on October 27, 2015, the Center received an informal email communication from Respondent's email address, whose most relevant content is as follows: "You are just wasting your time with this kind of idiocracy [...] The domain has nothing related to marlboro company or trademark and its just a blog opened for fun [...] By using their cigarettes daily i got in my mind to use their name and a life word after so it has a real meaning for me, but not intended to offend such funny companies who dont know what a blog is. Anyway, who cares?! You can take the domain [...]."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The informal email communication from Respondent referred to above cannot be deemed as a formal response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). The lack of a formal response from Respondent does not automatically result in a favorable decision for Complainant.1 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the MARLBORO trademark.
The disputed domain name entirely incorporates the MARLBORO trademark, adding a suffix ("life"). The addition of such dictionary term is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainant's trademark (see Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co., WIPO Case No. D2009-0428 and Scania CV AB v. Ana Garcia, WIPO Case No. D2013-1511).
Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that MARLBORO is well-known, and that it is has been used in commerce for many years. Complainant asserts that it has never authorized Respondent to use the MARLBORO trademark in a domain name or in any other manner that Respondent has no connection or affiliation with Complainant and that Respondent has never been known by the disputed domain name or such trademark.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.2 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent's registration and use of the disputed domain name is in bad faith.
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, this Panel is of the view that Respondent must have been aware of the existence of Complainant's trademark at the time it obtained the registration of the disputed domain name.
Complainant asserts that Respondent uses the disputed domain name to show erotic images and click-through links to paid advertising for educational programs, having provided a screenshot of the website associated to the disputed domain name which confirms Complainant's assertions.
Where the disputed domain name incorporates another's trademark in its entirety, coupled with just an irrelevant dictionary word, where the registration and use of the corresponding trademark preceded the registration of the disputed domain name by a number of years, where use of Complainant's trademark in the disputed domain name is without Complainant's authorization and where the website associated to the disputed domain name shows advertisements and erotic pictures coupled with erotic-suggestive legends, there is no doubt that Respondent has intentionally sought to attract, for commercial gain, Internet users to the website associated to the disputed domain name by including the MARLBORO trademark in the disputed domain name and creating a likelihood of confusion with such Complainant's trademark.3
Thus the overall evidence in the file indicates that Respondent's choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of Complainant's trademark, which denotes bad faith.
In light of the above, this Panel finds that 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, this Panel orders that the disputed domain name <marlborolife.info> be transferred to Complainant.
Date: December 10, 2015
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: "the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence."
2 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: "For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant's assertion."
3 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: "registration of a domain name in order to utilize another's well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith." In Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250, it was established: "due to the intrinsically distinctive character of Complainants' trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants' marks by diverting Internet traffic intended for Complainant."