WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. IS, ICS Inc.

Case No. D2016-1183

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 IS, ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <amarlboro.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2016.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 21, 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 cigarette company Philip Morris USA, Inc., of Virginia, United States of America.

The Complainant owns the trademark registrations Nos. 68,502, granted on April 14, 1908, for the mark MARLBORO and 938,510, for MARLBORO & design, granted on July 25, 1972, both covering cigarettes.

The domain name <marlboro.com> was registered by the Complainant on March 6, 2000.

The Respondent is IS, ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

The disputed domain name was registered on March 7, 2016. Evidence offered by the Complainant shows that the disputed domain name was offered for sale and resolved to a website which disclosed links named “Cheap Marlboro Cigarettes”, “Menthol Tobacco” and other names related to Marlboro cigarettes and tobacco in general.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <amarlboro.com> incorporates its mark MARLBORO and includes just the letter “a” before the mark. The Complainant finds that the disputed domain name is confusingly similar to its mark.

The Complainant also alleges that the addition of a generic Top-Level Domain name such as “.com” is irrelevant to determine whether a disputed domain name is confusingly similar to a protected mark or not.

It mentions that it is “inconceivable” for the Respondent to have a legitimate use of a domain name incorporating the mark MARLBORO due to the longtime use and the strength of this mark, as already decided in Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790.

The Complainant argues that the disputed domain name resolves to a website offering the disputed domain name for sale and also displaying links to other sites that display third parties’ advertisements and advertisements of Marlboro cigarettes.

According to the Complainant, MARLBORO marks have become distinctive and are associated with the Complainant’s company and products. The Complainant cites UDRP decisions recognizing the fame of the mark MARLBORO, namely, 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 and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

No authorization to use the marks MARLBORO or to register domain names encompassing this mark has been granted to the Respondent by the Complainant. The Respondent has no connection or affiliation with the Complainant.

The Complainant claims that a simple Internet search would have revealed its extensive use of the mark MARLBORO as source identifiers for its tobacco products.

It argues that it is the second time that the Respondent registers a domain name containing the mark MARLBORO. In the first case (Philip Morris USA Inc. v. ICS Inc., supra), involving the domain name <marlborow.com>, the panel has ordered the transfer of the domain name to the Complainant.

The Complainant concluded that by registering the disputed domain name and using it to point to a website that has pay-per-click links, the Respondent intentionally attempts to attract Internet users to its website for commercial gain and this proves the Respondent’s bad faith in registering and using the disputed domain name.

The fact that the disputed domain name is offered for sale on Afternic.com also manifests Respondent’s bad faith in registering and using the disputed domain name.

Moreover, the fact that the Respondent used a privacy service to mask its identity is also a strong indication of bad faith registration and use of the disputed domain name, under the Policy. To corroborate its allegation, the Complainant cites Bluewater Rubber & Gasket Co. v. Mrs Sian Jones / Easyspace Privacy, WIPO Case No. D2010-2112.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per 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 the 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 evidence presented demonstrates that the Complainant is the owner of the trademark MARLBORO in the United States of America to cover cigarettes. The Complainant’s trademark registration predates the registration of the disputed domain name.

The disputed domain name comprises the Complainant’s mark MARLBORO with the addition of the letter “a”.

The dominant element of the disputed domain name is the Complainant’s mark MARLBORO.

The letter “a” before the mark MARLBORO is not enough to avoid confusing similarity.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not denied the Complainant’s contentions that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no authorization to use the Complainant’s marks or to register domain names containing the trademark MARLBORO.

The Respondent is not known by the mark MARLBORO and the disputed domain name resolves to a website displaying links to Marlboro cigarettes, tobacco in general and third parties’ advertisements.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The mark MARLBORO has been registered by the Complainant in the United States of America since 1908.

The disputed domain name comprises the mark MARLBORO with the addition of the letter “a,” which does not avoid confusion with the Complainant’s trademark.

The Respondent has no rights or legitimate interests in using the mark MARLBORO.

The website at the disputed domain name offers the disputed domain name for sale and also displays links related to Marlboro cigarettes, tobacco in general and third parties’ advertisements, which indicates the Respondent’s use of the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark, known for identifying cigarettes.

This Panel finds that the Respondent’s intention of taking undue advantage of the mark MARLBORO as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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, <amarlboro.com>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 3, 2016