WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Host Master, Great Echo Ltd.

Case No. D2017-0032

1. The Parties

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

The Respondent is Host Master, Great Echo Ltd. of Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <marlbboro.com>, <marlbooro.com> and <marrlboro.com> are registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 11, 2017, 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 January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on February 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 is a corporation organized and existing under the laws of Virginia, in the business of manufacturing, marketing and selling cigarettes in the United States, including cigarettes under its brand Marlboro. The Complainant’s Marlboro cigarettes have been sold since 1883, with the modern history of the brand beginning in 1955.

The Complainant is the proprietor of the trade mark MARLBORO, registered in inter alia the United States, including the following:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Specification

United States

MARLBORO

68,502

April 4, 1908

Cigarettes

United States

MARLBORO & red roof design

938,510

July 25, 1972

Cigarettes

The Complainant is also the registered proprietor of the domain name <marlboro.com> which resolves to the home page of the Complainant’s business, “www.marlboro.com”, enabling access to information regarding the Marlboro products.

The disputed domain names <marrlboro.com>, <marlbboro.com> and <marlbooro.com> were registered on March 13, 2009, March 21, 2009 and March 22, 2009 respectively.

According to the evidence submitted by the Complainant, the disputed domain names each resolves to a website with an incomplete directory of click-through links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are all examples of typosquatting domain names of its MARLBORO trade mark, and are therefore identical or confusingly similar to its MARLBORO trade mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.

The Complainant requests for the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

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

(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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in MARLBORO by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names includes an obvious and deliberate misspelling of the Complainant’s

MARLBORO trade mark, i.e., “marlbboro”, which includes an extra “b” between “b” and “o”; “marrlboro”, which includes an extra “r” between “r” and “l”; and “marlbooro”, which includes an extra “o” between “b” and “o”.

The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name.

The disputed domain names are foreseeable typographical variants of the Complainant’s trade mark and the Complainant’s domain name <marlboro.com>. The slight typographical error (specifically, the addition of a single letter) is insufficient to distinguish the disputed domain names from the Complainant’s trade mark or its domain name <marlboro.com>. The Internet user who wishes to visit the Complainant’s website could easily make a typing error and be diverted to the Respondent’s website. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain names <marlbboro.com>, <marlbooro.com> and <marrlboro.com> are confusingly similar to the Complainant’s MARLBORO trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MARLBORO trade mark or to seek registration of any domain name incorporating the MARLBORO trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “marlboro”.

According to the evidence submitted by the Complainant, the disputed domain names each resolve to a website with an incomplete directory of click-through links. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the

registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s 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 trade mark 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 the respondent’s 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 MARLBORO trade mark has been in use since 1883. Even if we consider the brand’s modern history which began later in 1955, the trade mark has enjoyed a strong reputation worldwide for more than five decades. The Complainant and its MARLBORO trade mark also enjoy a significant online presence. There is no doubt that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain names. In any case, a presumption can be made that the Respondent was aware of the Complainant’s trade mark and related domain name <marlboro.com> when it registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the MARLBORO trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainant, the disputed domain names each resolve to a website with an incomplete directory of click-through links. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content -- for example, in the case of advertising links appearing on an “automatically” generated basis. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third-party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s MARLBORO trade mark resulting in misleading diversion.

Furthermore, in registering disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, the Respondent may be seeking to use them to offer sponsored links or redirect Internet users to websites offering competitive goods and services. In so doing, the Respondent will be depriving the Complainant of the opportunity to sell its goods and services to prospective clients who are clearly looking for the Complainant and, at the same time, promotes goods and services offered by competitors. The Respondent is clearly engaging in an act of typosquatting. The Panel is therefore prepared to draw the inference that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Furthermore, efforts to send written notice of the proceedings to the Respondent at the physical address provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names, <marlbboro.com>, <marlbooro.com> and <marrlboro.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: February 26, 2017