WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Hector Serra, THZ
Case No. D2017-0084
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“US”), represented by Arnold & Porter Kaye Scholer LLP, US.
Respondent is Hector Serra, THZ, San Juan, Commonwealth of Puerto Rico.
2. The Domain Name and Registrar
The disputed domain name <marlboromj.com> 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 17, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 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 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The Center received an email communication from Respondent on January 24, 2017. On February 13, 2017, the Center notified the Parties of commencement of panel appointment process. The Center received a second email communication from Respondent on February 21, 2017. After a request made by Complainant on February 22, 2017, the Center suspended the case on February 22, 2017. Complainant requested, on March 23, 2017, for the proceedings to be reinstituted, and accordingly, the case was reinstituted on March 23, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 4, 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 the well-known manufacturer and seller of Marlboro brand cigarettes in the United States and around the world. For well over a century, Complainant and its predecessor entities have sold cigarettes under the Marlboro brand. The MARLBORO mark was first used in commerce in 1883, and Complainant registered the trademark in the US in 1908. Complainant uses the MARLBORO trademark to market several different types of cigarettes. Complainant also owns the domain name <marlboro.com>, which resolves to the website through which Complainant promotes the Marlboro products.
Respondent registered the disputed domain name <marlboromj.com> on February 11, 2014. The disputed domain name resolves to a website showing the message “website coming soon!”.
After the Center notified Respondent of the Complaint, Respondent contacted the Center by email, stating that “the domain name in question to which I legally hold ownership of and am not using at the moment is up for purchase to Philip Morris International if they so desire.” In a second email communication, Respondent exhibited “interest in reaching an agreement regarding the dispute” and a willingness to “reach a fair agreement for both parties.” In view of Respondent’s communications, Complainant attempted to contact Respondent but was unable to reach Respondent.
5. Parties’ Contentions
Complainant contends that the modern history of the Marlboro brand goes back to 1955, and through Complainant’s substantial advertising and promotional campaigns the distinctive MARLBORO mark has become famous and uniquely associated with Complainant and its products in the US. Complainant argues that a domain name transfer is warranted here as the disputed domain name is confusingly similar to the MARLBORO mark as it incorporates the mark in its entirety, with the addition of “mj” (an abbreviation for marijuana) serving only to exacerbate the public’s confusion as it falsely suggests that Complainant is or will market marijuana cigarettes.
According to Complainant, Respondent is not affiliated with Complainant, is not known by the Marlboro name, is not offering nor preparing to offer any goods or services via the disputed domain name, and incorporated Complainant’s trademark in the disputed domain name to create a false impression of an association with Complainant.
Complainant also argues that Respondent registered and is using the disputed domain name in bad faith. As to bad faith in registration, Complainant contends that Respondent registered the disputed domain name with full awareness of Complainant’s preexisting rights in its famous and distinctive mark. Bad faith use, according to Complainant, is apparent from the fact that the disputed domain name serves to divert Internet users from the legitimate Marlboro website and tarnishes Complainant’s brand by associating the MARLBORO mark with marijuana, which is illegal under US law.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In view of Complainant’s registration, Complainant has rights in the MARLBORO trademarks. Further the disputed domain name fully incorporates the MARLBORO mark. The addition of the non-distinctive “mj” in no way avoids the confusion caused by the entire reproduction of the MARLBORO mark. Rather, it appears to indicate the existence of a Marlboro brand marijuana product. The “.com” generic Top-Level Domain (“gTLD”) does nothing to ameliorate the entire reproduction of the MARLBORO trademark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has established a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name. The unrebutted evidence shows that Respondent is not affiliated with Complainant and that he registered the disputed domain name without the authorization or a license.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Responded registered the disputed domain name in bad faith. Complainant’s sustained advertising campaign, combined with the popularity of Marlboro brand cigarettes, has made MARLBORO a well-known trademark. Consequently, it is reasonable to infer that Respondent was aware of the mark and Complainant’s rights in it when, in 2014, more than a century after Complainant registered its trademark rights in the US, he registered the disputed domain name incorporating Complainant’s mark. Respondent’s use of the mark in conjunction with a term for marijuana confirms his awareness of Complainant’s mark and its association with smoking products. The Panel finds that Respondent registered the disputed domain name in bad faith.
The Panel also finds bad faith use because the disputed domain name makes or implies a false statement of fact that may injure or tarnish a well-known commercial brand. If Respondent on the associated webpage knowingly made the false statement that, “Phillip Morris sells Marlboro brand marijuana cigarettes”, this Panelist would not hesitate to find bad faith use unless Respondent offered a plausible defense or explanation.
Here, the domain name itself conveys essentially the same false message – “Marlboro marijuana” – a phrase that uses “Marlboro” as trademark for marijuana. There is no such product today in the US where it violates federal law to possess or distribute marijuana. Nonetheless, an Internet user is likely to be confused into believing that Complainant is presently offering such a product or is planning to do so.
The Policy does not require that bad faith use be demonstrated only by reference to the content of an associated webpage. The Panel sees no reason why bad faith use may not be based on the message conveyed by the domain name alone, regardless of whether there are associated webpages repeating the false message, at least where the website offers nothing to explain or correct the bad faith message.
Where the disputed domain name conveys a false or misleading message, the absence of explanatory content on the webpage leaves the false message unqualified and allows confusion to persist. The content of a webpage can alter the message conveyed by a domain name and convert an apparently false message into parody or political satire. Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall, WIPO Case No. D2009-1182 (Internet users who viewed the content of “glennbeckrapedandmurderedayounggirlin1990.com” website would understand that the “total effect” was protected political commentary). In such cases, the content of the website serves to correct or undo the false message conveyed by domain name alone. It follows that the absence of explanatory content can have the opposite effect, leaving the domain name’s false message unfettered by any explanation or context and thereby free to cause confusion or mistake.
Where the disputed domain name conveys an ambiguous message, it is useful, perhaps necessary, to consider the content of the webpage to decide whether the message supports a finding of bad faith. Miss Universe L.P., LLLP v. The Marketing Model / Steven Roddy, WIPO Case No. D2010-1939 (“[w]here, as here, the domain name does not itself reflect non-affiliation or fair use, Respondent has a heightened duty clearly to explain its non-affiliation with the trademark owner.”). But where the domain name conveys a false or misleading message, the domain name alone can constitute bad faith use. In this context, the fact that the webpage has no content does not avoid a finding of bad faith use. On the contrary, the absence of content on the website exacerbates the problem created. In this respect, a domain name that conveys a false message is distinguishable from the disputed domain names in typical “passive holding” cases, where the domain names convey a neutral message that may not on its own give rise to an inference of bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2. In these cases, panelists often look to other evidence (e.g., concealment of respondent’s identity; a pattern of such abuse) to support an inference of bad faith. But where, as here, the domain name itself conveys a false and tarnishing message, a prima facie case of bad faith may be inferred from this alone, unless the website corrects or explains the false message.
Respondent’s webpage does not offer any content to explain or correct the false message that the disputed domain name conveys – that there is (or will soon be) a Marlboro brand marijuana cigarette. On the contrary, the minimal message “website coming soon!” corroborates the implication that Complainant is preparing to launch a “Marlboro marijuana” webpage or product.
Accordingly, the Panel finds that the disputed domain name itself is evidence of bad faith use because it conveys a false and tarnishing message and there is no content on the webpage that explains or corrects the false message.
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 <marlboromj.com> be transferred to Complainant.
Lawrence K. Nodine
Date: April 18, 2017