WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domain Administrator, See Privacyguardian.org / Mario Lawrence, Diggsites
Case No. D2016-2078
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 Domain Administrator, See Privacyguardian.org of Phoenix, Arizona, United States / Mario Lawrence, Diggsites of Middletown, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <marlbos.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2016. On October 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainant on October 14, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date, Complainant filed an amended Complaint.
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 Respondent of the Complaint, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 9, 2016.
The Center appointed Mark Partridge as the sole panelist in this matter on November 18, 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 sells cigarettes under the MARLBORO mark. The mark has been used for over 100 years and has become famous and well-known in the United States and abroad. The mark is the subject of many trademark registrations worldwide, including under United States Trademark Registration No. 68,502 for MARLBORO, registered on April 14, 1908. The MARLBORO mark has long been associated with the image of a cowboy and a red, white and black color scheme.
Respondent uses the disputed domain name <marlbos.com> for the sale of tobacco flavored e-liquids for vaping, a substitute for cigarette smoking. Respondent's website states "Our flavor is compar[able] to Marlboro cigarette brand. . .". The site features the image of cowboy and red, white and black imagery.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to its MARLBORO mark; that Respondent lacks any right or legitimate interest in the disputed domain name; and that the disputed domain name was registered and used in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has established its trademark rights for MARLBORO as indicated above in Section 4 of this Decision.
The Panel finds that the disputed domain name <marlbos.com> is confusingly similar to Complainant's MARLBORO mark. The names look and sound similar. Moreover, while the content of the website is typically disregarded under the first element, the Panel notes that the copy on Respondent's website, which compares Respondent's product to the MARLBORO product by name, suggests that the similarity is intentional.
B. Rights or Legitimate Interests
Respondent is not authorized to use a name or mark that is confusingly similar to Complainant's mark. Respondent has demonstrated no legitimate reason or rationale for using a name that is intentionally similar to Complainant's famous mark. Its use is not fair use or noncommercial use. Instead, it appears to be a deliberate use of Complainant's mark. As such, it should not be considered bona fide use in connection with the sale of genuine products. Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Based on the use of a disputed domain name confusingly similar with Complainant's MARLBORO mark and of imagery similar to Complainant's long-used cowboy imagery for a related product, and the explicit association of that product with MARLBORO as described above under Section 4 of this Decision, the Panel finds that the disputed domain name was registered and used in bad faith for the deliberate purpose of attracting Internet users for commercial gain with the intent of targeting Complainant's MARLBORO mark.
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 <marlbos.com> be transferred to Complainant.
Date: December 2, 2016