WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Juozas Niurnaitis, Organgrider

Case No. D2016-2560

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter, United States.

The Respondent is Juozas Niurnaitis, Organgrider of Caracas, Venezuela (Bolivarian Republic of), self-represented.

2. The Domain Name and Registrar

The disputed domain name <marlboro.press> is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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.

On December 19, 2016, December 21, 2016, and December 22, 2016, the Center received email communications from the Respondent. In response to the Respondent's emails, the Complainant sent submissions on December 20, 2016 and January 3, 2017.

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 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Response was filed with the Center on January 15, 2017. The Complainant responded to the Response in a Supplemental Filing on January 17, 2017, and the Respondent responded to the Complainant in an email on January 18, 2017.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 24, 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 and sells cigarettes under the trademark MARLBORO. The Complainant and its predecessors in title have been selling cigarettes under the trademark since 1883. The Complainant says however that the modern history of the brand commenced in 1953. The Complainant has extensively advertised its trademark. Although the Complaint does not provide details in terms of expenditures, as the Complainant points out, numerous panels have previously recognised that the Complainant's MARLBORO trademark is famous worldwide.

The Complainant is the owner of at least two registered trademarks in the United States:

(a) Registered Trademark No. 68,502 for MARLBORO in respect of cigarettes which was registered on April 14, 1908; and

(b) Registered Trademark No. 938,510 for MARLBORO and the "red roof" design, also in respect of cigarettes, which was registered on July 25, 1972.

According to the Registrar, the disputed domain name was registered in the Respondent's name on August 5, 2016.¹

When the Complaint was filed, the disputed domain name resolved to a website which the Complaint fairly summarises in the following terms:

"[the disputed domain name] resolves to a website that reads 'The News Reporter' and contains links to news articles in various categories: business; fashion; the United Kingdom; MTV; collagefashion [sic]; Justluxe1; Justluxe2; and lifestyle (the 'Infringing Website'). In addition, the website includes numerous blank pages in other categories: World News; Sports; Technology; Business; Movies; Entertainment; Books; Culture; and Classifieds."

The Respondent says that each Internet server may have 65,000 ports and points out that additional activities take place at and <secondlife.marlboro.press:65002>.

The landing page for <tv.marlboro.press> is headed "Marlboro T.v" with the strapline "Streaming video". It includes an embedded 25 minute video which is described as the shareware version of the film, The Corporation. There are also what appear to be representations of promotional posters for The Corporation, The Corporation Part 2 and another film, Prophet. There is a link "Videos" which takes the browser to a page which states "No videos". A further link to "Videos" from that page takes the browser to an embedded video of "The Corporate [sic] part 2".

The <secondlife.marlboro.press:65002> URL redirects to a webpage headed "SHOUTcast Streem Status". It is streaming jazz music.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.

Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance, materiality and weight of the evidence.

Ordinarily, the Panel would not admit the email communications before the Response was filed into the record. The Panel notes, however, that the Response incorporates some of the content of the emails by reference. In fairness to both parties, therefore, the Panel admits both the Respondent's and the Complainant's emails into the record.

The Complainant's Supplemental Filing addresses matters raised in the Response which could not reasonably have been anticipated. The Panel, therefore, will include the supplemental filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2. The Panel will also admit the Respondent's short supplemental filing in reply to the Complainant's supplemental filing.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks identified in section 4 above. As also noted in section 4 above, panels in previous disputes involving the Complainant's trademark have recognised it is among famous marks worldwide.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview 2.0, paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

For these reasons, the Respondent's objection that the trademark is generic or otherwise not distinctive as the name of several geographic locations or otherwise descriptive falls to be considered under the subsequent stages of the inquiry and is not relevant at this first stage.

Disregarding the inclusion of the Top-Level Domain ("TLD"), ".press", the disputed domain name differs from the Complainant's trademarks by the omissions of the stylized script and the stylized graphic element of the "red roof" design. The term "Marlboro" nevertheless remains the prominent and distinctive element of both trademarks.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name 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 name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 2.0, paragraph 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. Given the longstanding and extensive renown of the Complainant's trademark, these matters are sufficient to raise the necessary prima facie case.

As already foreshadowed, the Respondent contends that the Complainant does not have a monopoly or exclusive rights over the expression "Marlboro". The Respondent points out that "Marlboro" is the name of a number of places:

Marlboro, New Jersey;
Marlboro, New York;
Marlboro, Vermont;
Marlboro, Virginia;
Upper Marlboro, Maryland
Marlboro County, South Carolina;
Marlboro, Gauteng is the name of a suburb of Sandton in Gauteng Province, South Africa;
a city in Eastern Massachusetts.

Apparently, there is also a Marlboro Street in Cork Ireland, a Marlboro Lane in Bell Canyon in California, a range of mountains known as Marlboro Mountains and a number of businesses such as Marlboro Motors and Marlboro Windows and Doors and a school. According to the Respondent, it is also the name of a particular type of pastry and an acronym for "Men Always Remember Love Because of Romance Only". Accordingly, the Respondent contends it is perfectly legitimate for it to register and use the disputed domain name.

Accepting that "Marlboro" can refer to one or more of the places or business or other uses identified by the Respondent, there are two fundamental problems with the Respondent's claim.

First, the Panel anticipates that, for the vast majority of users of the Internet, the term "Marlboro" is likely to convey an association with the Complainant's "Marlboro" products.

Most importantly, the use which the Respondent makes of the disputed domain name has absolutely nothing to do with any of these places, businesses or other uses of the term "Marlboro". The website to which the disputed domain name resolves has been outlined in section 4 above. So far as the record in this case shows, it does not involve any content related to, for example, Marlboro in New Jersey, United States or any other place, business or use called "Marlboro". In terms of the content of the website, the use of the term "Marlboro" is completely arbitrary.

When it is claimed that a respondent has rights or legitimate interests under the Policy in a term because of its descriptive or geographic significance, panels have usually required that the domain name actually be used in connection with that descriptive or geographic significance in a meaningful way: WIPO Overview 2.0, paragraph 2.2.

For example, in the context of pay-per-click websites, previous panels have recognised that, where a respondent has registered a domain name consisting of dictionary terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. However, the domain name must have been registered because of, and any use must be consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

The decision in Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited, WIPO Case No. D2015-1128 does not assist the Respondent. It is one particular instance on very different facts to the present situation.

In the present case, the Respondent's website owes nothing to the asserted geographic or descriptive meanings of "Marlboro" and so the claimed rights or legitimate interest cannot be sustained.

In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint. See, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As already noted in section 5B above, the Respondent's website does not relate to any of the claimed descriptive or geographic uses of "Marlboro". The use of the Complainant's trademark appears to be entirely arbitrary in terms of the content of the website.

The Respondent does not deny prior knowledge of the Complainant's trademark before registering the disputed domain name. Indeed, the Respondent was apparently formerly a smoker himself. Given the widespread renown of the Complainant's trademark, it would be very difficult for such a claim to be sustained. In these circumstances, the rejection of the Respondent's claim to rights or legitimate interests in the disputed domain name leads to a compelling inference that the disputed domain name was registered and is being used to take advantage of the significance of "Marlboro" as the Complainant's trademark.

Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy.

6. Decision

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 <marlboro.press> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 7, 2017

¹As nothing turns on whether Mr. Niurnitas and the listed registrant organization "Organgrinder" are the same or different entities, the Panel will for convenience refer only to the Respondent.