WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Dusan Vanek
Case No. D2016-0908
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 Dusan Vanek of Praha, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <marlboro.cloud> (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2016.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
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 1883 and has been registered since April 14, 1908.
The Respondent registered the Disputed Domain Name <marlboro.cloud> on February 16, 2016.
The Disputed Domain Name resolves to an inactive website.
5. Parties' Contentions
The Complainant cites its U.S. trademark registration Nos. 68,502 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 Name <marlboro.cloud>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MARLBORO trademark and that confusing similarity is not removed by the addition of the generic Top-Level Domain ("gTLD") ".cloud".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive website (citing: Société Nationale des télécommunications: Tunisie Telecom v. Isamel Leviste, WIPO Case No. D2009-1529).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant's trademarks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a 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 Name is identical or confusingly similar to the MARLBORO trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant's trademark MARLBORO followed by (b) the gTLD ".cloud".
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 Name, specifically: "marlboro".
The Panel observes that the Disputed Domain Name is identical to the MARLBORO trademark and 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 ways that a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent's rights or legitimate interests 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 Name because it has not granted any license, authorization or consent to the Respondent to use the trademark MARLBORO and there is no evidence of the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that it resolves to an inactive website.
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 Name 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 a 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. PrivacyProtect.org / Nicola 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 the respondent was not aware of the MARLBORO trademarks").
Further, a gap of ten years between the registration of a complainant's trademarks and a respondent's registration of a 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 Name more than a century after the Complainant established trademark rights in the MARLBORO mark.
In this case, no response to the Complaint has been filed, the Respondent knew or should have known about the Complainant's well-known trademark when he made identical use of that mark in the Disputed Domain Name, it resolves to an inactive website and the circumstances of registering it in a relatively new gTLD is suggestive of cybersquatting. In the absence of a response, this Panel regards such conduct as prima facie evidence of bad faith registration and use under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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, <marlboro.cloud>, be transferred to the Complainant.
Date: June 27, 2016