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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Angga Saputra / Domain Admin and PrivacyProtect.org

Case No. D2015-2176

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Angga Saputra of Elkhart, Indiana, United States of America / Domain Admin and PrivacyProtect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <marlboro.host> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 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 3, 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 8, 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 proceeding commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016.

The Center appointed Maxim H. Waldbaum 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 Philip Morris USA Inc. (“PM USA” or “the Complainant”) is a corporation organized and existing under the laws of the Commonwealth of Virginia, United States. PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its MARLBORO trademarks. Marlboro cigarettes have been made and sold by PM USA (and various predecessor entities) since 1883.

The Complainant is the registered owner of the valid trademarks of MARLBORO and MARLBORO and Red Roof design, bearing the registration numbers 68,502 and 938,510 on the Principal Register of the United States Patent and Trademark Office.

In addition, the Complainant is the owner of and operates the website at “www.marlboro.com” (since March 6, 2000). The Panel particularly affirms such validness of Complainant’s ownership, albeit the fact that the “Annex E” that has been submitted by the Complainant states the expiration date of such registration was March 6, 2014. Said registration, however, has been updated and its latest expiration date is March 6, 2016.

The Panel concurs that the Complainant’s MARLBORO trademarks are well known. It was determined by many previous UDRP panels. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris Incorporated v. r9.net, WIPO Case No. D2003-0004.

Domain Admin and PrivacyProtect.org were the Respondents based on the original Complaint, but were later determined as domain registrant identity shielding service providers. In the amended Complaint filed on December 8, 2015, the Respondent has been substituted to Angga Saputra as the real registrant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the MARLBORO mark which the Complainant has rights.

The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) The 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

The Panel finds that the Disputed Domain Name is identical to Complainant’s mark.

It is clear to this Panel that the Disputed Domain Name is identical to Complainant’s mark. The Disputed Domain Name incorporates the Complainant’s mark without any alteration, and merely differs by the substitution of the suffix “.com” into “.host”. UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks.”)

Further, it has been decided in many cases under the Policy that “essential” or “virtual” identity is sufficient for the purposes of the Policy. The use of Top-Level domain (“TLD”) should not be considered when comparing the Mark and the Domain Name. See The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102. The suffix “.com” is of no significance. Therefore, the first element is established.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762.

Accordingly, the Complainant needs first to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden [of production] shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names.” See Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.

In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(iii) of the Policy.

This finding is inter alia based on the following, non-disputed, circumstances:

(1) The Respondent has no connection or affiliation with the Complainant, and the Respondent was never known by the Disputed Domain Name;

(2) The Respondent has never sought or obtained trademark registrations for MARLBORO;

(3) The Complainant has not licensed or otherwise permitted the Respondent to use the MARLBORO trademark;

(4) The Respondent’s use of the Disputed Domain Name is not in a bona fide offering of goods or services, and does not constitute any legitimate noncommercial or fair use.

In particular, the only use that the Respondent has made of <marlboro.host> has been to direct traffic to an inactive webpage stating “Sorry, we couldn’t find that page”, which is not considered a use of the disputed domain name in connection with a bona fide offering of goods or services.

As nothing in the record rebuts the Complainant’s prima facie case, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.

Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a Disputed Domain Name:

(i) Circumstances indicating that you [Respondent] have registered or you [Respondent] 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 trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) You [Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) You [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location.

Firstly, as aforementioned, MARLBORO trademarks have been considered famous pursuant to many previous UDRP panels. In this Panel’s view, having regarded the fact that the Complainant’s trademark was registered and used many years (almost a century) before the Disputed Domain Name registration and the well-known nature of the trademark, it is palpable that the Disputed Domain Name was registered and used with knowledge of the Complainant’s trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. This is further evidenced by the fact that the Respondent completely incorporates the trademark without any alteration in its domain name and changing the gTLD is of no consequence.

However, even assuming, arguendo, that the Respondent is not aware of Complainant’s marks, it is compelling for this Panel to find otherwise, since in paragraph 2 of the UDRP, it clearly states that it is the responsibility of the domain name holder to research whether or not their domain name registration will infringe or violate third party rights. A basic search would have revealed the strong presence of the Complainant. Therefore, this Panel finds that the Respondent therefore either did not conduct a basic search or did in fact make a basic search and was aware of the Complainant’s mark. See City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643

Further, this Panel finds that bad faith can be inferred by its inactive use. It has been long-established that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2. Such conclusion is as well reflected by other facts that the Complainant owns a well-known trademark and that the Respondent has not responded to the Complaint to demonstrate its entitlement of the Disputed Domain Name.

However, this Panel disagrees with the Complainant on one of the assertions that Respondent’s use of privacy service constitutes a finding of bad faith. It is firstly because use of a privacy or proxy registration service per se is not an indication of bad faith. See WIPO Overview 2.0, paragraph 3.9. More importantly, due to the fact that the identity of the registrant was revealed subsequently and the Complaint was amended accordingly in a timely matter, it is not plausible for this Panel to find this assertion as one of the cumulative circumstances found to be an indicative of bad faith. Nonetheless, this will not overweigh the totality of the circumstances herein discussed.

Thus, taking all the above into account, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and that the Complainant has therefore established the requirement in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <marlboro.host> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: January 26, 2016

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