WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Samurai Kapok and 1
Case No. D2016-2179
1. The Parties
Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America (“United States” or “U.S”).
Respondent is Samurai Kapok and 1 of Sukhothai, Thailand.
2. The Domain Name and Registrar
The disputed domain name <marlboroprs.com> is registered with Launchpad.com Inc. (The “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016 On November 5, 2016 an email from received from the Respondent but no response was filed by the due date. The Center issued a notice of commencement of Panel Appointment Process on November 29, 2016.
The Center appointed Eduardo Machado as the sole panelist in this matter on December 6, 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
Complaint owns numerous trademark registrations before the USPTO for the MARLBORO trademark, as noted below:
Registration no. 68,502 for the MARLBORO trademark, registered on April 14, 1908, in connection to cigarettes.
Registration no. 938,510 for the MARLBORO and red roof design trademark, registered on July 25, 1972, in connection to cigarettes.
Registration no. 854,007 for the MARLBORO and green roof design trademark, registered on August 06, 1968, in connection to cigarettes.
Complainant is the owner of the domain name <marlboro.com>.
The disputed domain name <marlboroprs.com> was registered on August, 03, 2016.
5. Parties’ Contentions
Basically, Complainant states that it is a company that manufactures, markets, and sells cigarettes in the United States, including cigarettes under its MARLBORO trademarks. Also, Complainant alleges that its cigarettes have been made and sold since 1883, with the history of the brand beginning in 1955, in connection with its tobacco and smoking-related products.
Complainant argues that it has registered the MARLBORO trademark before the U.S Patent and Trademarks Office (USPTO), and that also markets and sells the product MARLBORO BLACK.
Complainant affirms that it has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks throughout the United States, and has developed substantial goodwill in its trademarks, that have become distinctive and are uniquely associated with Complainant and its products.
Complainant alleges that numerous UDRP panels already have determined that the MARLBORO trademarks are famous.
Complainant also states that it has registered the domain name <marlboro.com> that redirects to its website, which enables access to information regarding Complainant, MARLBORO products, and special offers to age verified adult smokers 21 years of age or older.
Therefore, Complainant argues that its registrations for the MARLBORO trademarks establish that it has rights in these marks under paragraph 4(a)(i) of the Policy.
Complainant defends that the disputed domain name is confusingly similar to the MARLBORO trademarks, as it consists of “marlboro” combined with the random letters “prs” and the Top-Level Domain (TLD) suffix “.com”, which does not distinguish the domain name from Complainant’s trademarks.
Moreover, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, as it has no connection or affiliation with Complainant, its affiliates, or any of the products provided by Complainant under the MARLBORO trademarks, and as Respondent was never known by any name or trade name that incorporates the word “Marlboro”.
Complainant states that Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and it has not received any license, authorization, or consent to use the MARLBORO trademarks in a domain name or in any other manner. Also, affirms that the WhoIs record associated with the domain name does not identify Respondents by the name “marlboroprs.com”, and that there is no evidence of Respondent’s use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.
Furthermore, Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent or commercial gain, because the domain name resolves to a website that offers illegally-imported, grey market goods or counterfeit cigarettes for sale.
Also, Complainant argues that Respondent’s misappropriation of the MARLBORO mark by its inclusion in the domain name is no accident, as it chose to use this trademark to divert Internet users from Complainant’s website by capitalizing on the public recognition of the its trademarks.
Complainant defends that Respondent has registered the domain name in bad faith by doing so with full knowledge of Complainant’s rights in the MARLBORO trademarks, which predate Respondent’s registration of the domain name, as the MARLBORO trademark has been in use since 1883 and was registered in 1908, and the domain name was registered more than a century later, on August, 3, 2016. Also, Complainant argues that simple Internet search would have revealed Complainant’s extensive use of the MARLBORO trademarks as source identifiers for its tobacco products.
Complainant states that Respondent’s conduct in using Complainant’s trademark to divert Internet users from Complainant’s true website demonstrates bad faith. Also, Complainant affirms that by registering the domain name and using it to point to a website displaying the MARLBORO trademarks on cigarette pack and purporting to offer cartons of MARLBORO cigarettes, Respondent has acted in bad faith.
Complainant affirms that by registering the domain name and offering illegally-imported, grey market or counterfeit cigarettes for sale on the website, Respondent is intentionally attempting to attract Internet users for commercial gain.
Finally, Complainant alleges that the registration and use of the domain name creates a form of initial interest confusion, which attracts Internet users based on the use of Complainant’s trademarks.
Apart from the email received from Respondent on November 5, 2016 stating: “I’m sorry. Ok. I will to edit name my domain. I hope you will forgive. Thank you very much.”. Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights;
(ii) that Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Consequently, Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
Complainant has shown that it is the owner of the registered trademark MARLBORO, which is well-known at least for cigarettes as held by many other panels in UDRP decisions. See Philip Morris USA Inc. v. Oneandone Private Registration, 1&1 Internet Inc. / Marlboro Cemal, WIPO Case No.D2016-1279 (finding that the MARLBORO trademarks are world-famous and over a century old).
The disputed domain name consists of the term “Marlboro”, with the mere addition of random letters “p”, “r” and “s”. As indicated by Complainant, previous UDRP panels have found that the mere addition of random letters to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark. See Philip Morris USA Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Carlos Santos, WIPO Case No. D2015-1478.
Moreover, Complainant is the owner of the domain name <marlboro.com>, being the only difference with the disputed domain name the addition of the letters “p”, “r” and “s”.
Also, on the subject of any generic Top-Level Domain (“gTLD”) suffix in a domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Therefore, the suffix “.com” in the disputed domain name cannot be taken into account as a distinctive element. See Tinynova LLC v. Chris Edwards, WIPO Case No. D2016-0804 (“the disputed domain name incorporates the denominative part of the mark BACKIT in its entirety, with the mere addition of the generic Top-Level Domain suffix ‘.co’, which can be disregarded being a mere technical requirement of registration”).
Therefore, neither the addition of random letters to a well-known mark nor the addition of a gTLD Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a claim of confusing similarity.
In view of the above, the Panel finds that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive list of examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are; (i) if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services; (ii) if a respondent has been commonly known by the domain name; or (iii) if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark in issue.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See Philip Morris USA Inc. v. Andy McMillan / Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-1278 (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) and paragraph 2.1 of the WIPO Overview 2.0.
In this case, nothing in the record indicates or suggests that Complainant has authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the MARLBORO trademark.
Likewise, there is no evidence to suggest that Respondent has ever been known by “Marlboro” or any name identical or similar to the disputed domain name, and neither the WhoIs information indicates otherwise.
Also, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent or commercial gain and neither is using the domain name in connection with a bona fide offering of goods or services. On the contrary, Respondent is apparently using the domain name to sell counterfeit cigarettes and promote aother brands which compete with Complainant’s business.
Lastly, the Panel notes that Complainant has prior rights in the MARLBORO trademark which precede Respondent’s registration of the disputed domain name.
Therefore, considering that Respondent did not present any allegations or evidence of rights or legitimate interests it might have in the disputed domain name, Policy, paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the MARLBORO trademark.
In fact, as stated above, in accordance with many other UDRP panels, the term MARLBORO is a well-known trademark. In this sense, it is inconceivable that Respondent would not have been aware of Complainant’s trademark when he registered the disputed domain name. This is also supported by the fact that the disputed domain name redirects Internet users to a website that offers cigarettes for sale.
Respondent has therefore attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s mark.
The Panel, therefore, concludes that the sale purorted, grey market goods or counterfeit cigarettes as well as promoting the brands that compete with Complainant under a domain name incorporating Complainant’s mark indicate use in bad faith.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Thus, the Panel finds that the third element of the Policy has been fulfilled.
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, <marlboroprs.com> be transferred to Complainant.
Date: December 20, 2016