WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Mark Palmer, Magicmojo
Case No. D2016-1826
1. The Parties
The Complainant is Philip Morris USA Inc of Richmond, Virginia, United States of America ("US"), represented by Arnold & Porter LLP, US.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Mark Palmer, Magicmojo of San Diego, California, US.
2. The Domain Name and Registrar
The disputed domain name <isomarlboro.racing> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 15, 2016.
The Center verified that the Complaint together with the amended 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 September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2016.
The Center appointed William F. Hamilton as the sole panelist in this matter on October 20, 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 manufactures, markets, and sells cigarettes. The Complainant has actively utilized the MARLBORO trademark (the "Mark") since at least 1955 in connection with its tobacco and smoking related products. The original US registration of the Mark dates back to April 14, 1908. The Complainant is also the owner of the domain name <marlboro.com> that promotes the Complainant's tobacco and cigarette products.
The Respondent registered the disputed domain name June 2, 2016. The disputed domain name resolves to a parking page displaying sponsored links to tobacco-related products.
5. Parties' Contentions
The Complainant asserts that disputed domain name is confusingly similar to the Mark, that the Respondent does not have any rights or legitimate interests in either the Mark or the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based on the record filed, the Panel finds that the Complainant has duly proven it has rights to the MARLBORO Mark.
The disputed domain name is composed of the letters "iso" prefixed to the Complainant's Mark following by the generic Top-Level Domain ("gTLD") ".racing". Numerous UDRP panels have determined that domain names composed by the addition of generic prefixes and/or suffixes to a complainant's mark are confusingly similar to the mark. See, e.g., Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675(transferring <marlboroblack.com>). The Complainant suggests "iso" sometimes is an abbreviation for "in search of". The Panel suspects, however, that "iso" may refer to a 1973 Formula 1 racing vehicle sponsored by the Complainant.1 Irrespective of its historical origin, the disputed domain name predominantly features the Complainant's Mark as its principal component. Also, the gTLD ".racing" is irrelevant in determining whether the disputed domain name is confusingly similar to the Mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's Mark. The Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent did not respond to the Complaint. The Complainant affirmatively asserts that the Complainant never authorized the Respondent's use of the Mark or the disputed domain name. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. Indeed, the disputed domain name points to a website featuring links related to the sale of tobacco products offered by other companies and vendors competing with the Complainant.
The Panel finds that that the Respondent does not possess any rights or legitimate interests in the disputed domain name and that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant's Mark registration dates back over a century; it is inconceivable that the Respondent was unaware of the Complainant's Mark when registering the disputed domain name especially when the Respondent's website features links to other websites offering the sale of tobacco related products. Phillip Morris USA, Inc. v. ADN HOSTING, WIPO Case No. D2007-1609. Even assuming some astounding and blissful ignorance on behalf of the Respondent of the Mark and a remarkable coincidence in the Respondent's use of the disputed domain name to sell and promote tobacco products, a simple Internet or domain name search would have disclosed the Complainant's ownership of the Mark and the extensive scope of the Complainant's use of the Mark. The Respondent's willful blindness is sufficient evidence, in and of itself, of bad faith registration and use. The Respondent's unmistakable intent is to utilize the Complainant's Mark to attract unsuspecting Internet users to the Respondent's website that offers links to Internet locations purporting to sell the Complainant's branded tobacco products and other tobacco-related products.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirement under 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 <isomarlboro.racing> be transferred to the Complainant.
William F. Hamilton
Date: November 3, 2016
1 See http://www.grandprix.com/gpe/con-willi.html.