WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domain Admin / Whois Privacy Corp.
Case No. D2016-0910
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 Domain Admin / Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <us-marlboro.website> (the "Disputed Domain Name") is registered with TLD Registrar Solutions Ltd. (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 May 9, 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 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 <us-marlboro.website> on November 26, 2015.
The Disputed Domain Name resolves to a websites offering illegal drugs for sale, including hashish.
5. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines "Respondent" as "the holder of a domain name registration against which a complaint is initiated". The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, and in view that most UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent Domain Admin / Whois Privacy Corp. is the proper respondent ("Respondent") (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9).
As noted having regard to the Complainant's submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is the United Kingdom of Great Britain and Northern Ireland.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. The words "calculated to achieve actual notice" in paragraph 2 of the Rules do not demand proof of service.
6. 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 <us-marlboro.website>. 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 descriptive term "website".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website offering illegal drugs for sale, including hashish, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name (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.
7. 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) the abbreviation "us", (b) followed by a hyphen, (c) followed by an exact reproduction of the Complainant's trademark MARLBORO, and (d) followed by the generic Top-Level Domain ("gTLD") ".website".
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: "us-marlboro".
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 geographical indicia such as, in this case, "us" (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 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 a website offering for sale illegal drugs, including hashish.
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.
Given the Disputed Domain Name resolves to a website that offers for sale illegal drugs, including hashish, and the Complainant's uncontentious and uncontested submission that it has "for many decades used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products" this Panel regards such conduct as constituting serious bad faith registration and use of the Disputed Domain Name and also being against the public interest.
In this case, the Complainant has a well-known trademark, no response to the Complaint has been filed, and the Respondent's identity is concealed by a privacy service. 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 registration and use of the Disputed Domain Name 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.
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, <us-marlboro.website>, be transferred to the Complainant.
Date: June 27, 2016
1 In general, having regard to the definition of "mutual jurisdiction" in the Rules, it would either be that of the registrant's address as identified in the Registrar's WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office (i.e. the United Kingdom of Great Britain and Northern Ireland).