WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Andy McMillan / Registration Private, Domains By Proxy, LLC
Case No. D2016-1278
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter, United States.
Respondent is Andy McMillan of Denver, Colorado, United States / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name, <marlboromarijuana.info>, 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 23, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on July 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 2, 2016.
The Center appointed Gary J. Nelson as the sole panelist in this matter on August 11, 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
Complainant is the owner of at least two trademark registrations for MARLBORO in the United States. Specifically, Complainant owns at least the following trademark registrations:
Date of Registration
April 14, 1908
MARLBORO and Design [Red Roof]
July 25, 1972
The disputed domain name, <marlboromarijuana.info>, appears to have been registered on January 6, 2016. There is no active website associated with the disputed domain name.
5. Parties’ Contentions
Complainant manufactures, markets, and sells cigarettes in the United States in association with the MARLBORO trademark, and has been doing so since 1883. Complainant also uses its MARLBORO trademark in association with smoking-related products.
Complainant has spent substantial time, effort and money advertising and promoting its MARLBORO trademark throughout the United States and has developed substantial goodwill in this same trademark. Complainant alleges its MARLBORO trademark is famous.
Complainant has created valuable trademark rights in MARLBORO and uses this trademark in connection with several variations of MARLBORO branded cigarettes.
Complainant has registered the domain name <marlboro.com> and has created a website linked to this domain name that enables access to information regarding Complainant’s MARLBORO branded products, along with special offers to age-verified adult smokers 21 years of age or older.
The disputed domain name is confusingly similar to Complainant’s MARLBORO trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the MARLBORO trademark and the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark.
Complainant owns at least two MARLBORO trademark registrations in the United States.
Accordingly, Complainant has established rights in its MARLBORO trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is confusingly similar to Complainant’s MARLBORO trademark because the disputed domain name incorporates the entirety of Complainant’s MARLBORO trademark and merely adds the generic term “marijuana” and the generic Top-Level “.info” domain suffix.
Neither the addition of purely descriptive terms to a well-known mark nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
In this case, the addition of the word “marijuana”, and the addition of the generic Top-Level “.info” domain suffix directly behind Complainant’s MARLBORO trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms “marlboro”, “marijuana”, or any combination of these terms. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its MARLBORO trademark.
For the disputed domain name, Respondent is maintaining a passive and undeveloped website. In this case, Respondent’s failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the dispute domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the MARLBORO trademark.
Respondent’s awareness of the MARLBORO trademark may also be inferred because Complainant’s MARLBORO trademark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name, and since the MARLBORO trademark is widely known and famous. The relevant priority dates for all of Complainant’s relevant trademark registrations precede the date upon which the disputed domain name was registered (i.e., January 6, 2016). See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The disputed domain name is not being actively used. The apparent lack of so-called active use does not as such prevent a finding of bad faith in the circumstances of this case. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <marlboromarijuana.info>, be transferred to Complainant.
Gary J. Nelson
Date: August 25, 2016