WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Shimei Wang
Case No. D2016-2517
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter Kaye Scholer LLP, United States of America (“United States”).
The Respondent is Shimei Wang of Jinan, Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <marlboro.shop> is registered with Go Canada Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2016. On December 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, 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.
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 proceedings commenced on December 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2017.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 13, 2017. 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 in the United States including cigarettes under its MARLBORO trademarks. It and various predecessors have done so since 1883 with the modern history of the brand beginning in 1955. The Complainant relies upon two registered trademarks, both for cigarettes, the first of which was registered on April 14, 1908 (registration number 68,502 for MARLBORO), and the second of which on July 25, 1972 (registration number 938,510 for MARLBORO and design). It has also put up copies of the relevant registrations. The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and has accordingly developed considerable goodwill in them. Both trademarks record in their registrations that they are internationally registered for class 34 in respect of cigarettes.
The Complainant has also registered the domain name <marlboro.com> which points to its United States website “www.marlboro.com”.
The disputed domain name was registered on September 26, 2016.
5. Parties’ Contentions
The Complainant points out that the disputed domain name incorporates the whole of its trademark and that is accordingly confusingly similar to the Complainant’s trademarks and cites various decisions in support of its contention. It also points out that its trademarks have, in previous UDRP decisions in which it was the Complainant, been found to be famous worldwide and therefore that the Respondent, by creating a likelihood of confusion with such trademarks, deprives the Complainant from offering its products to prospective clients. The Complainant further points out that the incorporation into the disputed domain name of the whole of its trademark clearly is an infringement of its rights resulting in confusion and that the further addition of the word “.shop” does not detract therefrom. Citing various UDRP decisions in support of its contention, the Complainant stresses the fact that this is not merely an incorporation of the word “marlboro”, it consists of “marlboro” combined with “.shop” and thus would lead the public to believe that an association exists between the Complainant and the Respondent.
The Complainant further points out that the Respondent has no rights or legitimate interests entitling it to use the word “marlboro” nor was the Respondent ever known by any name or trade name that had reference thereto. Moreover, the Respondent never sought or obtained any trademark registration for the word “marlboro” and has not received any license, authorization or consent whether express or implied to make use thereof. The Complainant further contends that it follows that there is no conceivable basis for the Respondent to have a legitimate use of the disputed domain name.
The Complainant proceeds to assert that the registration and use of the disputed domain name is in bad faith, contending particularly that the original registration of its trademark was more than a century earlier than the registration of the disputed domain name and that being well-known, the Respondent knew or ought to have known of the Complainant’s prior rights. It contends further that the Respondent is deemed, at very lowest, to have constructive notice of the trademark rights in circumstances and complains that the registration was in bad faith because false or inaccurate information by way of the Respondent’s address was furnished to the Registrar of its domain name, which conduct supports the inference of bad faith. The Complainant also contends that even though the Respondent’s website is not yet operative, the fact that the disputed domain name resolves to an inactive website is further support for the notion that bad faith is to be inferred.
As pointed out earlier, in the absence of any response, reaction or communication from the Respondent, nothing is before the Panel reflecting any views, comments or likely defenses from the Respondent.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favor by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc., supra; RX America LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The Complainant has cited several previous URDP decisions which it contends confirm that the MARLBORO trademark is world famous. As the Respondent was not a party of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply and what may have been found proven in these decisions is not evidence in this matter or binding on the Panel. (LEGO Juris A/S v. Administration Dominious, WIPO Case No. D2013-0265; LEGO Juris A/S v. Michael Fainstein, WIPO Case No. D2013-0464); although the Panel may have regard to findings of law therein.
On the basis of its evidence and contentions in this matter, however, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6.bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Article 6.2 and 6.3 of the GATT Agreement of Trade Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that close as well (V&S Vin and Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
In any event, the Panel agrees with the submission by the Complainant that only in very unusual circumstances will the Panel look behind decisions of territorial trademark authorities who have registered a mark, as that would provide sufficient prima facie proof of a right under paragraph 4(a) of the Policy. (Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857).
The Complainant holds registered United States trademarks and domain names, all pre-dating the disputed domain names, as well as domain names based on the MARLBORO trademark.
The fact that the word mark MARLBORO has been incorporated entirely into the disputed domain names is sufficient in this case to establish that they are identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking /Neo net Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The Panel agrees with the Complainant’s contention that the addition of the generic Top-Level Domain (“gTLD”) “.shop” after the trademark MARLBORO is not sufficient to exclude the confusing similarity (Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to rebut or displace the Complainant’s evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark MARLBORO, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license, express, implied or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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 a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”
The Panel notes that the disputed domain name contain in their entirety the Complainant’s trademark, MARLBORO, which on the face of it is not a word having an ordinary meaning in the English language.
The implication arising from the disputed domain name, in the mind of an Internet user, is that the Respondent is either of or in some way associated with the Complainant, or that it is the official online shop of the Complainant. The disputed domain name resolves to a “website coming soon” page, which without any further explanation is akin to passive holding. The Panel finds that such use of the disputed domain name does not avoid a finding of bad faith under the present circumstances.
Moreover, the registration of the disputed domain name, which is identical to the Complainant’s trademark, with the gTLD “.shop”, is indicative of the Respondent’s intent to trade on the value established by the Complainant in its mark and domain name to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. and Geo Cities v. Data Art Corp., Data Art Enterprises, Inc., Stonybrook Investments, Globalnet 2000, Inc., Powerclick, Inc., and Yahoo Search Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s trademark, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc., supra).
In view of the fact that, prima facie, the courier’s report records that the Written Notice was delivered and signed for by the person at the Respondent’s address indicated in the Whois schedule, the Panel finds it unnecessary to decide whether an incorrect address was furnished to the Registrar. In any event, the Panel is of the view that, as pointed out above, more than sufficient evidence is before it to establish registration and use in bad faith.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <marlboro.shop> be transferred to the Complainant.
Archibald Findlay S.C.
Date: January 27, 2017