WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Xing Yize
Case No. D2016-1310
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 Xing Yize of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain names <cheapmarlborocigs.com>, <cheapmarlborousacigarettes.com> and <usamarlboro.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 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. On July 4, 2016, the Center transmitted by email to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding by email on July 5, 2016. The Respondent did not comment on the language of the proceeding by the specific due date.
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 proceeding commenced on July 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on August 8, 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 established under the laws of the Commonwealth of Virginia, United States of America. It is the owner of, inter alia, United States of America (“U.S.”) trade mark registration Nos. 68,502 for the MARLBORO word mark and 4,170,978 for the roof design. The Complainant manufactures, markets and sells cigarettes in the U.S. under its MARLBORO trade mark. Marlboro cigarettes have been made and sold by the Complainant and its predecessor entities since 1883. The MARLBORO trade mark and variations thereof have been used for many decades in relation to its tobacco and smoking-related products.
Substantial time, effort and money advertising and promoting the MARLBORO trade marks have been spent by the Complainant throughout the U.S., as a result of which, the MARLBORO trade marks have become uniquely associated with the Complainant and its products. The MARLBORO trade mark has been recognized as well known by many UDRP panels.
The Complainant has registered the <marlboro.com> domain name. It resolves to the Complainant’s website which enables access to information regarding the Complainant, Marlboro products, and special offers to age-verified adult smokers.
The disputed domain names resolve to websites that display the heading “Newport Authentic American Design” in English, subheadings “Marlboro Gold” and “Marlboro Red” and offer Marlboro brand cigarettes for sale. The websites purportedly offer MARLBORO cartons of cigarettes for sale and display, without the Complainant’s authorization, cartons showing the Complainant’s MARLBORO word mark and trade dress (the latter comprises the word mark MARLBORO and its distinctive “roof design”).
The Complainant states, on information and belief, that the Respondent unlawfully imports cartons of cigarettes labeled MARLBORO which are manufactured outside the U.S. The Complainant believes the cigarettes are counterfeit in nature. The home pages of the Respondent’s websites state that the cigarettes are “exported orientedly to overseas country [sic.]”. This indicates that the cigarettes may be manufactured for shipment amongst other places, to the Orient.
The disputed domain names were all registered on March 9, 2016.
5. Parties’ Contentions
1. The disputed domain names are confusingly similar to the MARLBORO trade mark since the MARLBORO trade mark is incorporated in its entirety therein. The use of the words “cheap” and “cigarettes” in connection with the Complainant’s trade mark leads to an exacerbation of the level of confusion because the word “Marlboro” signifies to the relevant public the Complainant’s famous brand of cigarettes. The public may be misled into believing that the Complainant is selling discount cigarettes online.
2. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, its affiliates or any of the many products provided by the Complainant under the MARLBORO trade marks. The Respondent was never known by any name or trade mark that incorporates the word “Marlboro”. From what the Complainant has been able to determine, the Respondent has never sought nor obtained any trade mark registrations for MARLBORO or any variation thereof. The Respondent has not been licensed, authorized or permitted to use the MARLBORO trade mark in any domain name or in any other manner. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. The Respondent’s websites may offer counterfeit cigarettes for sale. The Respondent’s misappropriation of the MARLBORO trade mark by its inclusion in the disputed domain names is not by chance. The Respondent chose to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the MARLBORO trade marks.
3. The Respondent has registered and is using the disputed domain names in bad faith. The Respondent registered the disputed domain names with full knowledge of the Complainant’s rights in the MARLBORO trade marks. These marks greatly pre-date the Respondent’s registration of the disputed domain names. A simple search on the Internet would have revealed the Complainant’s extensive use of the MARLBORO trade marks. Further, the Respondent’s use of the exact MARLBORO trade marks to divert Internet users from the Complainant’s website demonstrates bad faith use under the Policy. The prominent display of the MARLBORO word mark and trade dress without the Complainant’s authorization and purported offer for sale of cartons of Marlboro cigarettes constitute infringement of the Complainant’s trade marks. This conduct amounts to bad faith within the meaning of the Policy.
The fact that the Respondent holds not only one but three disputed domain names manifests the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant requested, notwithstanding, for English to be the language of the proceeding because the Respondent appears to have, at the very minimum, “great familiarity with the English language”. This can be surmised from a review of the infringing websites at the disputed domain names. The Respondent uses English words in the disputed domain names, namely “cheap”, “USA”, “cigarette” and “cigs”. Further, the disputed domain names resolve to websites that are exclusively in the English language and the Respondent lists information for two U.S. locations on its websites. On the “Contact Us” pages of the Respondent’s websites, an address that is located in the U.S. is listed and the phone number provided shows a telephone area code for the city of New York in the U.S..
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(b) and (c) of the Rules provides that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Panel is of the view that it would be appropriate in this instance for English to be the language of the proceeding. The factors which have led to the Panel’s determination on this issue are: (i) the fact that the disputed domain names contain English generic terms and the name of a widely-known American brand of cigarettes, (ii) the Respondent’s websites are entirely in English and obviously intended to target English-speaking consumers, and (iii) the importance of ensuring that the administrative proceeding takes place with due expedition. Requiring the Complainant to translate the Complaint and other supporting documents into Chinese would significantly delay matters. In view of the aforesaid and the fact that the Respondent did not object to the Complainant’s request, the Panel concludes that it would be appropriate to proceed accordingly.
The Respondent did not respond on the issue but the Panel is of the view, in this regard, that any objection that the Respondent might have put forward against the use of English as the language of the proceeding would prove very difficult to sustain.
B. Identical or Confusingly Similar
The Complainant has shown it has registered trade mark rights to the word MARLBORO. The trade mark MARLBORO has been incorporated in its entirety in each of the disputed domain names and identifiable therein albeit the word “Marlboro” has been combined with other generic terms.
A well-established consensus amongst UDRP panels is that the addition of generic or descriptive terms to a domain name registration would not serve to remove the confusing similarity to a trade mark which has been incorporated in a domain name. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views in Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In this instance, the descriptive terms “cigarettes”/“cigs” and “usa” respectively correspond to the type of products the Complainant is known for and its location. The confusion with the Complainant’s trade mark is increased by this fact.
The Panel accordingly finds that the Complainant has established paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with nor authorized by the Complainant to use the MARLBORO trade mark or to incorporate it in a domain name. There is nothing which demonstrates that the Respondent is commonly known by the name “Marlboro” nor is there evidence of the use of the disputed domain names in connection with a bona fide offering of goods. What is manifestly clear is that the Respondent is well acquainted with the Complainant’s mark and its goods.
The Complainant’s assertions and evidence in support have not been rebutted by the Respondent.
The Panel accordingly finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The disputed domain names were registered many years after the MARLBORO trade mark was first used and registered. Significant reputation and goodwill have been established in the MARLBORO name and made by the Complainant (and its predecessors) whereas the Respondent has completely failed to explain how it came about the choice of the disputed domain names, all of which contain the word “Marlboro” and references to cigarettes. The incorporation of the Complainant’s widely-known MALRBORO trade mark in the disputed domain names cannot be regarded as registration and use in good faith where there are blatant references to the Complainant’s MARLBORO marks and goods on the Respondent’s website and where nothing on the websites indicate to the Internet users that they are not associated or affiliated with the Complainant. In the circumstances, the Respondent’s misappropriation of the Complainant’s mark by the domain name registrations constitutes registration and use in bad faith.
Moreover, the Panel notes the Complainant’s contention that the products sold on the websites are counterfeits of the Complainant’s products. If this indeed is the case, this would be additional evidence of bad faith registration and use of the disputed domain names.
The Panel therefore concludes that the disputed domain names were registered and are being used in bad faith and accordingly finds that the Complainant has established 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 names, <cheapmarlborocigs.com>, <cheapmarlborousacigarettes.com> and <usamarlboro.com> be transferred to the Complainant.
Date: August 20, 2016