WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Naveen Patnayak

Case No. D2016-0832

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 of America.

The Respondent is Naveen Patnayak of Mumbai, Maharashtra, India.

2. The Domain Names and Registrar

The disputed domain names <marlboro-carton.com> and <marlboroscarton.com> (“Disputed Domain Names”) are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 28, 2016, 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 May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2016.

The Center appointed Nicholas Weston as the sole panelist in this matter on June 6, 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 the tobacco division of a multinational corporation which operates a cigarette business in the United States of America (U.S.). The Complainant holds registrations for the trademark MARLBORO in the U. S., which it uses to designate cigarettes. U.S. Trademark Registration No. 68,502, shows a first use date of “0-0-1883” and has been registered since April 14, 1908.

The Respondent registered the Disputed Domain Names <marlboro-carton.com> and <marlboroscarton.com> on October 25, 2015 and October 26, 2015 respectively.

The Disputed Domain Names resolve to inactive websites.

5. Parties’ Contentions

A. Complainant

The Complainant cites its U. S. trademark registration Nos. 68502 and 938,510 for the mark MARLBORO and the latter registration accompanied by the “red roof” device as prima facie evidence of ownership.

The Complainant submits that the mark MARLBORO is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names <marlboro-carton.com> and <marlboroscarton.com>. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in its entirety the MARLBORO trademark (citing U. S. court decision: Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326

(9th Cir. 1998)) and that the similarity is not removed by the addition of the term “carton” which describes a bulk form of packaging.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because they resolve to inactive websites, and contend that such a respondent has no rights or legitimate interests in the domain name (citing: Societe Nationale v. Isamel Leviste, WIPO Case No. D2009-1529).

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MARLBORO in the U. S. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Names are identical or confusingly similar to the MARLBORO trademark, the Panel observes that the Disputed Domain Names comprise: (a) an exact reproduction of the Complainant’s trademark MARLBORO followed by (b) a hyphen in the case of the Disputed Domain Name <marlboro-carton.com> (c) followed by the descriptive word “carton” and (d) the generic Top-Level Domain (“gTLD”) “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names, specifically: “marlboro-carton” and “marlboroscarton”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a hyphen or words such as, in this case, “carton” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, supra).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods and services, noting that they both resolve to inactive websites.

This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark MARLBORO is so famous a mark for cigarettes that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“well-known worldwide”); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 (“well-known”); Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (“worldwide renown”); Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263 (“worldwide renown”); Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (“inconceivable” respondent “was not aware of the MARLBORO┬« trademarks”).

Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Names more than a century after the Complainant established trademark rights in the MARLBORO mark.

In this case, the Complainant has a well-known trademark, no response to the Complaint has been filed, and the Registrant’s identity was initially concealed by WhoisGuard Protected/Whois Guard, Inc. The consensus view in paragraph 3.2 of WIPO Overview 2.0, and also this Panel, regards such conduct as prima facie evidence of bad faith in the absence of a response.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 names, <marlboro-carton.com> and <marlboroscarton.com>, be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: June 22, 2016