WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Torsten Rössing
Case No. D2015-2366
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 Torsten Rössing of Pattensen, Germany.
2. The Domain Name and Registrar
The disputed domain name <marboro.bio> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 29, 2015. On December 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 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").
The Complaint was submitted in German and English. The language of the Registration agreement is English. Pursuant to the Rules, paragraph 11 and the Center proceeded in English.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2016.
The Center appointed James Bridgeman as the sole panelist in this matter on February 9, 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 has used the MARLBORO trademark in the United States and other jurisdictions throughout the world in connection with the manufacture and sale of cigarettes and tobacco products since it was established in the year 1883.
The Complainant is the registered owner of the following United States federal registered trademarks:
MARLBORO registration number 68,502, registered on April 14, 1908 for "Cigarettes"; and
MARLBORO and Red Roof design, registration number 938,510 registered on July 25, 1972 for "Cigarettes".
The disputed domain name was registered on August 9, 2015 and is held passively.
There is no information available about the Respondent except for that which has been furnished in the Complaint and the Registrar's WhoIs.
5. Parties' Contentions
The Complainant relies on its rights in the above-listed United States registered trademarks which it submits are valid, subsisting, and incontestable registrations pursuant to 15 U.S.C. § 1065. The Complainant further submits that it has acquired rights at common law through its long and extensive international use of the MARLBORO mark in connection with manufacture, marketing, and sale of cigarettes in the United States and throughout the world since 1883.
The Complainant submits that the fame of its MARLBORO trademark has been recognized in the decisions of many panelists appointed under the Policy including: 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. 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.
The Complainant alleges that the disputed domain name, <marboro.bio> is confusingly similar to the MARLBORO trademark as it includes an obvious and deliberate misspelling of the famous mark, merely omitting the letter "l", but otherwise identical to the Complainant's word mark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that the Respondent has no connection or affiliation with the Complainant or its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademark. The Complainant adds that, on information and belief, the Respondent was never known by any name or trade name that incorporates the word "Marlboro", nor has the Respondent ever sought or obtained any trademark registrations for the word "Marlboro" or any variation thereof. The WhoIs record associated with the disputed domain name does not identify the Respondent by the name "marboro.bio". Furthermore the Complainant asserts that the Respondent has not received any license, authorization, or consent, either express or implied, to use the MARLBORO trademark in a domain name or in any other manner, either at the time when Respondent registered and began using the disputed domain name, or at any other time since.
Additionally, the Complainant argues that several UDRP panels have found that a respondent cannot acquire rights or legitimate interests in a disputed domain name merely by permitting the domain name at issue to resolve to an inactive website, as the Respondent is doing in the present case. In this regard, the Complainant cites as an example the decision of the panel in Société nationale des télécommunications: Tunisie Telecom v. Isamel Leviste, WIPO Case No. D2009-1529, (noting that passive holding of a disputed domain name "does not constitute a legitimate use of such a domain name" that would give rise to a legitimate right or interest in the name).
The Complainant submits that the Respondent registered the disputed domain name in bad faith; that the Respondent has registered the disputed domain name with full knowledge of the Complainant's rights in the MARLBORO mark; that the Respondent's misappropriation of the MARLBORO mark by its inclusion in the disputed domain name is no accident; and that the Respondent clearly chose to use the Complainant's trademark to divert Internet users from the Complainant's website by capitalizing on the public recognition of the MARLBORO trademark. The Complainant refers to the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at which stated that when a complainant's trademark is distinctive, it is "not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant", and Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790 where the panel commented that it was "inconceivable" for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademark "given the longtime use of the MARLBORO trademarks and strength of the Complainant's brand".
The Complainant asserts that the MARLBORO mark has been in use since 1883 and was registered in the United States in 1908, whereas the disputed domain name was registered more than a century later, on August 9, 2015. Even a simple Internet search would have revealed the Complainant's extensive use of the MARLBORO trademark.
Furthermore the Respondent has previously been found to have registered and used in bad faith domain names incorporating a famous trademark.
The Complainant submits that the Respondent is using the disputed domain name in bad faith to divert Internet users to his website and that this conclusion of bad faith is bolstered by the fact that the disputed domain name resolves to an inactive website. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") 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 submits that there are cumulative circumstances which are indicative of bad faith registration and use including that the Complainant has a well-known trademark, there was no Response to the Complaint filed.
The Complainant submits that this Panel should consider the totality of the circumstances and make a finding of bad faith registration and use of the disputed domain name by the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
(i) the disputed 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 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
This Panel accepts the Complainant's submission that the disputed domain name is confusingly similar to the MARLBORO trademark in which the Complainant has rights.
The Complainant has provided evidence of its ownership and extensive use of the MARLBORO trademark in its business as a manufacturer and seller of cigarettes and tobacco products for over a century.
The disputed domain name <marboro.bio> is almost identical to the Complainant's MARLBORO mark, except for the omission of a single letter. Having compared both, this Panel finds that the disputed domain name is both aurally and visually confusingly similar to the Complainant's trademark. For the purposes of comparison the generic Top-Level Domain ("gTLD") ".bio" extension may generally be ignored.
The Complainant has therefore satisfied the first element, paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is almost identical to the Complainant's MARLBORO mark; in the absence of a response or other communication from the Respondent there is no explanation as to why such a confusingly similar domain name was chosen and registered; the Respondent's name on the WhoIs database bears no similarity to the disputed domain name; the disputed domain name resolves to an inactive website; the Complainant's trademark is well-known internationally and the Complainant has not given the Respondent any right, license or authorization to use the disputed domain name.
It is well established under the Policy that in such circumstances the burden of production shifts to the Respondent to establish its rights or legitimate interests. No response or explanation has been delivered by the Respondent and in such circumstances the Respondent has failed to rebut the Complainant's prima facie case.
In the circumstances this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant is entitled to succeed in the second element of the test paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
Because of the similarity of the disputed domain name and the Complainant's well-known MARLBORO trademark, the fact that they are identical except for the omission of a single letter "l" in the disputed domain name, it is most probable that the disputed domain name was selected and registered because of its reference to the Complainant's trademark and reputation.
The similarity of the domain name and the Complainant's mark, the well-known character of the Complainant's century-old mark and reputation, the fact that the disputed domain name has been permitted or allowed to resolve to an inactive website and the Respondent's prior history of registering domain names incorporating well-known third-party trademarks are cumulative circumstances which are indicative of bad faith registration and use of the disputed domain name.
In the absence of any Response or explanation, this Panel finds that, on the balance of probabilities, the Respondent is engaged in "typosquatting" and the disputed domain name was registered in order to take advantage of the Complainant's mark. Furthermore in such circumstances the passive holding of the disputed domain name since its registration amounts to bad faith use of the disputed domain name.
The Complainant has therefore satisfied the third and final element, 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 <marboro.bio> be transferred to the Complainant.
Date: February 23, 2016