WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Jason Lee
Case No. D2016-2585
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America (“United States”).
The Respondent is Jason Lee of Hong Kong, China.
2. The Domain Names and Registrars
The disputed domain names <buybensonandhedgescigarettes.com> and <marlborodiscountcigarettes.com> are registered with Rebel.com Corp. The disputed domain name <marlborodiscountcigarettes.info> is registered with DNC Holdings, Inc. The disputed domain names are hereinafter referred to as the “Disputed Domain Names”. Rebel.com Corp. and DNC Holdings, Inc. are hereinafter referred as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2016. On December 21, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On December 21, 2016 and December 22, 2016, the Registrars transmitted by email to the Center their verification responses 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 proceeding commenced on December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2017.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 23, 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 markets cigarettes under its MARLBORO and BENSON & HEDGES registered marks. Both brands have been made and sold by the Complainant and its various predecessors since the nineteenth century in the United States. The Complainant owns United States registered marks for both brands. The MARLBORO trademark No. 68,502 was registered on April 14, 1908. The BENSON & HEDGES word mark No. 428,435 was registered on March 25, 1947. The Complainant has spent substantial time, money and effort in advertising and promoting these brands. Several UDRP panels have determined that the MARLBORO trademark is famous worldwide. For example, see Philip Morris USA Inc. v ICS Inc., WIPO Case No. D2013-1306 and Philip Morris USA Inc. v. PrifacyProtect. Org / Nicola Pieropan, WIPO Case No. D2011-1735.
The Disputed Domain Name <buybensonandhedgescigarettes.com> was registered on November 27, 2012. The Disputed Domain Name <marlborodiscountcigarettes.info> was registered on April 15, 2014 and the Disputed Domain Name <marlborodiscountcirgarettes.com> was registered on March 8, 2015. The Complainant owns the domain name <marlboro.com> through which it offers Marlboro products to age-verified smokers aged over 21. It also operates a website accessed through the domain name <altria.com> through its parent company for marketing its Benson & Hedges products.
All the Disputed Domain Names redirect the Internet users to the website “www.az-smokes.com”. This website offers Marlboro and Benson & Hedges cigarettes as well as certain other brands. The website purports to offer several varieties of Marlboro and Benson & Hedges cigarettes. The display incorporates the Complainant’s marks and registered trade dress for each brand.
The Complainant’s information and belief is that the cigarettes offered through the Disputed Domain Names are manufactured in countries other than the United States and are materially different from cigarettes manufactured and sold by the Complainant in the United States. The Complainant believes that the cigarettes promoted on the offending websites are not allowed to be shipped into the United States or else are counterfeit. The Respondent has not denied these allegations.
The Complainant gave the Respondent no authorization of any kind to reflect any of its marks in any of the Disputed Domain Names.
5. Parties’ Contentions
The Disputed Domain Names are confusingly similar to the Complainant’s registered marks. The Disputed Domain Names incorporate all the wording of the registered marks. The generic words added do not dispel the confusion. Rather, the words “discount” and “buy” add to the confusion for Internet users.
The Respondent has no legitimate interests or rights in the Disputed Domain Names such as would be justified by paragraph 4(c) of the Policy
The Respondent has registered the Disputed Domain Names in bad faith, doing so with full knowledge of the Complainant’s rights in its marks. The use that the Respondent, upon information and belief, has made of the Disputed Domain Names, i.e., to derive revenue from the unauthorized sale of cigarettes – constitutes bad faith. The Respondent’s use of the Disputed Domain Names in this manner supports the inference that the Respondent has used the Disputed Domain Names with the intent to deceive Internet users and profit from the goodwill associated with the marks.
Due to the fame of the marks, the Respondent surely knew that the inclusion in the Disputed Domain Names of the names of the well-known brands MARLBORO and BENSON & HEDGES would cause confusion among Internet users as to whether the Complainant was affiliated with the Respondent, or sponsored or endorsed the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
To be successful, the Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present (paragraph 4(a) of the Policy).
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the marks acquired through use and registration which predate by many decades the dates of registration of the Disputed Domain Names. The Complainant has not filed any direct evidence of its rights in the marks outside of the United States, but the Panel has no hesitation in finding that the marks are well known worldwide as has been held by many other UDRP panels. See, e.g., Philip Morris USA Inc. v. Wan Wang, WIPO Case No. D2011-0584 and the cases referred to earlier.
The Disputed Domain Names incorporate the marks in full to which it adds the words “cigarettes” and “discount” or “buy”. The addition of these non-distinctive words does not serve to distinguish any of the Disputed Domain Names from the marks in any way but rather enhances the confusion by encouraging Internet users to buy the products offered on the websites.
The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainant’s marks and therefore holds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademarks in the Disputed Domain Names.
This fact and the circumstances of the present case satisfy paragraph 4(a)(ii) of the Policy in the absence of any response or evidence from the Respondent.
The Respondent could have claimed that one of the situations envisaged by paragraph 4(c) of the Policy applied to the registration of the Disputed Domain Names, e.g., by invoking paragraph 4(c) of the Policy to the satisfaction of the Panel that one of its three provisions applied in this case. However, the Respondent has chosen not to do so, and the Complainant has met its burden. The Complainant’s claim that it gave the Respondent no authority is not challenged by the Respondent.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Names. Therefore, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel holds as a very strong inference that the Respondent registered the Disputed Domain Names in bad faith and must have done so with knowledge of the Complainant’s rights in the registered marks. See Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was “inconceivable” that a respondent, who sold tobacco products, “was not aware of the MARLBORO trademarks”).
Paragraph 4(b)(iv) of the Policy provides:
“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 website associated with the Disputed Domain Names offers for sale (through an associated website to which it resolves) the Complainant’s products and some of those of the Complainant’s competitors. In registering and using the Disputed Domain Names, the Respondent is clearly using the marks of the Complainant in order to attract Internet users to the Disputed Domain Names. The Panel finds use of the marks in this manner in order to promote the sale of cigarette products of the Complainant’s competitors is clear evidence of bad faith. The words added to the marks in each of the Disputed Domain Names enhance the bad faith element.
Moreover, the exploitation of consumer confusion for the purpose of selling counterfeit goods, with evident knowledge of a complainant’s trademark right is “one of the strongest examples of registration and use in bad faith”. (See Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058) and the decisions cited in that case. That description covers the situation here.
Therefore, paragraph 4(a)(iii) of the Policy is satisfied.
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 Names <buybensonandhedgescigarettes.com>, <marlborodiscountcigarettes.com> and <marlborodiscountcigarettes.info> be transferred to the Complainant.
Sir Ian Barker
Date: February 2, 2017