WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Curt McConnell

Case No. D2017-0015

1. The Parties

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

Respondent is Curt McConnell of Fredericksburg, Virginia, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <marlboroman.net> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2017, 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 January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 8, 2017.

The Center appointed Richard W. Page as the sole panelist in this matter on February 15, 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

Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia, with its principal place of business in Richmond, Virginia, USA. Complainant manufactures, markets and sells cigarettes in the United States, including cigarettes under its famous MARLBORO Mark. MARLBORO cigarettes have been made and sold by Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, Complainant has used the MARLBORO Mark and variations thereof in connection with its tobacco and smoking-related products.

Complainant is the registered owner of numerous registrations of the MARLBORO Mark in the United States which are identified in the Complaint. Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO Mark. Through such widespread, extensive efforts, the MARLBORO Mark has become distinctive and is uniquely associated with Complainant and its products. Numerous UDRP administrative panels have already determined that the MARLBORO Mark is famous.

Complainant has registered the domain name <marlboro.com>. This domain name points to Complainant's website "www.marlboro.com" (the "MARLBORO Website"), which enables access to information regarding Complainant, MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.

Respondent registered the disputed Domain Name on December 24, 2005. The Disputed Domain Name resolves to a single page indicating that a website is coming soon.

5. Parties' Contentions

A. Complainant

Complainant contends that its registrations of the MARLBORO Mark establish that it has rights in this trademark under paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name is confusingly similar to the MARLBORO Mark, because it incorporates the entirety of the MARLBORO Mark and because the addition of the phrase "man" is non-distinctive.

Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name. Complainant further alleges that Respondent has no connection or affiliation with Complainant, was never known by any name that incorporates the word "Marlboro," has made no use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.

Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith, because the Panel can infer Respondent's actual knowledge of the MARLBORO Mark given Complainant's pervasive use for decades in the United States and throughout the world. Complainant further asserts that Respondent is using the Disputed Domain Name to divert Internet users from Complainant's legitimate website.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a 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."

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by Complainant: See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the MARLBORO Mark; and,

ii) that 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.

A. Identical or Confusingly Similar

Complainant contends that its registrations of the MARLBORO Mark establish that it has rights in this trademark under paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name is confusingly similar to the MARLBORO Mark, because it incorporates the entirety of the MARLBORO Mark and because the addition of the phrase "man" is non-distinctive.

Complainant contends that it has numerous registrations of the MARLBORO Mark and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MARLBORO Mark. Complainant further contends that its registrations are incontestable and conclusive evidence of its ownership of the Mark and exclusive right to use the MARLBORO Mark in connection with the stated goods.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the MARLBORO Mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not refuted Complainant's contentions of trademark rights. Therefore the Panel finds that Complainant has enforceable rights for purposes of this proceeding in the MARLBORO Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MARLBORO Mark pursuant to the Policy paragraph 4(a)(i).

Complainant argues that the entirety of the MARLBORO Mark is incorporated into the Disputed Domain Name. Complainant further argues that when the Disputed Domain Name incorporates the entire Mark with only the addition of a common word, it is still confusingly similar to the Mark as the addition of the term "man" does not eliminate the likelihood of confusion. See, NameSecure L.L.C.F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel finds that the entirety of the MARLBORO Mark is included in the Disputed Domain Name and that the addition of the term "man" is non-distinctive. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the MARLBORO Mark, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name. Complainant further alleges that Respondent has no connection or affiliation with Complainant, was never known by any name that incorporates the word "Marlboro," has made no use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) lists three nonexclusive circumstances for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 MARLBORO Mark.

In light of the circumstances, the Panel finds that Complainant's allegations are sufficient to make a prima facie showing of Respondent's lack of rights or legitimate interests in the Disputed Domain Name and that Respondent has not refuted this showing. Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith, because the Panel can infer Respondent's actual knowledge of the MARLBORO Mark given Complainant's pervasive use for decades in the United States and throughout the world. Complainant further asserts that Respondent is using the Disputed Domain Name to divert Internet users from Complainant's legitimate website.

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith as set out in the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the MARLBORO Mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the MARLBORO Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] 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 MARLBORO Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The Panel finds that the assertions of Complainant, together with the circumstances of the case, are sufficient to satisfy paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.

7. 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 <marlboroman.net> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: February 28, 2017