WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Whoisguard Protected, WhoisGuard Inc. / Kim Chulsu
Case No. D2015-2139
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter LLP, United States of America.
The Respondent is Kim Chulsu of Seoul, South Korea.
2. The Domain Name and Registrar
The disputed domain name <first-marlboro.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 3, 2015
The Center verified that the Complaint together with the amended 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 December 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.
The Center appointed Pablo Palazzi as the sole panelist in this matter on January 14, 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. The Complainant (and various predecessor entities) has been supplying products under trademarks incorporating the word "Marlboro" since1883.
The Complainant has trademark rights over MARLBORO and MARLBORO (and design), amongst other countries and territories, in the United States.
The Complainant is also the registrant of the domain name <marlboro.com> which was created on March 6, 2000.
The disputed domain name resolves to an inactive website that only displays a message in Korean. According to the Complaint, the message reads: "The relevant IP address restricts page access by the administrator."
The disputed domain name was created on May 24, 2015.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to its well-known and distinctive trademark MARLBORO. The Complainant observes that the addition of the word "first" does nothing to distinguish the disputed domain name, nor does the addition of the generic Top-Level Domain ("gTLD") ".com".
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 states that several panels applying the Policy have found that when respondents, such as the Respondent here, fail to make any use of the disputed domain name, merely pointing that domain name to an inactive website, such a respondent has no rights or legitimate interests in the 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.
The Complainant argues that the inactive nature of the infringing website also supports the conclusion that the Respondent is acting in bad faith. Complainant notes that the disputed domain name evidently has no website associated with it. 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 requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
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 <first-marlboro.com> is confusingly similar to the Complainant's trademark MARLBORO. The disputed domain name incorporates the word "Marlboro", which is confusingly similar to the trademark MARLBORO with the addition of the generic term "first" followed by a hyphen.
Therefore, the Panel finds that the Complainant has 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 disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("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 online 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.
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; Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779; and Philip Morris USA Inc. v. George Liarakos, WIPO Case No. D2015-1789), this Panel is of the view that the Respondent must have been aware of the existence of the Complainant's trademark at the time it obtained the registration of the disputed domain name.
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 is being passively held. Passive holding of the disputed domain name coupled with the fame of the Complainant's trademark and the Respondent´s default 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 <first-marlboro.com> be transferred to the Complainant.
Date: January 31, 2016