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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Mike Tomson

Case No. D2017-0306

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 of America.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Mike Tomson of Mississauga, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <marlborosfree.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on February 21, 2017. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on February 24, 2017.

The Center verified that the Complaint together with the first and the second amended Complaints 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 March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2017.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on April 3, 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, a company specialized in manufacturing and selling cigarettes, bases the Complaint on the mark MARLBORO, which identifies cigarettes in the United States and many other countries and jurisdictions, which have been sold since 1883, with the modern history of the brand beginning in 1955.

The Complainant is the registered owner of the MARLBORO trademarks in the United States and in numerous other jurisdictions worldwide. In support of the Complaint, the Complainant relies on a long list of MARLBORO registered trademarks, including the United States registration no. 68,502 MARLBORO (word mark), registered on April 14, 1908.

The disputed domain name <marlborosfree.site> was registered on September 25, 2016, and it is not linked to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to manufacture, market, and sell cigarettes in the United States, including cigarettes under its famous MARLBORO trademark, which have been made and sold by the Complainant since 1883, with the modern history of the brand beginning in 1955.

The Complainant asserts to be the registered owner of the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products, including United States trademark registration for MARLBORO (word mark), no. 68,502, registration dating back to April 14, 1908, and MARLBORO and Red Roof(figurative mark), United States trademark registration no. 938,510, registration date July 25, 1972.

The Complainant contends the disputed domain name is confusingly similar to its famous trademark MARLBORO, since it incorporates the mark in its entirety, adding that the mere addition of the extra letter “s” to indicate the plural and the generic word “free” in the disputed domain name, does not distinguish the disputed domain name from the trademarks owned by the Complainant. Finally, the Complainant argues that the addition of a Top-Level Domain (“TLD”), in this case, “.site”, is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

Secondly, the Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the term “Marlboro”. The Respondent has never sought or obtained any trademark registrations for “marlboro” or any variation thereof. The Respondent has not received any license, authorization, or consent, express or implied, to use the MARLBORO Trademarks in a domain name or in any other manner, either at the time when Respondent registered and began using the disputed domain name, or at any other time since.

Finally, the Complainant argues the Respondent has registered and is using the disputed domain name in

bad faith, by doing so with full knowledge of the Complainant’s rights in the MARLBORO trademarks, which predate the Respondent’s registration of the disputed domain name, and is being used in bad faith, as Respondent’s very method of infringement, using the exact MARLBORO trademarks to divert Internet users from the Complainant’s official website, would demonstrate bad faith use under the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel considers that the information provided by the Complainant clearly attests that the disputed domain name <marlborosfree.site> can be considered confusingly similar to the Complainant’s trademark MARLBORO.

In this regard, the Panel agrees with the Complainant’s contentions that the addition to MARLBORO of the plural “s”, and the dictionary word “free” to the MARLBORO mark do not distinguish the disputed domain name from the Complainant’s trademarks. Likewise, the TLD “.site”, is typically irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

Accordingly, this Panel finds that the disputed domain name <marlborosfree.site> is confusingly similar to the Complainant’s trademark MARLBORO, and this requisite has been satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests he may have in the disputed domain name. Neither has he refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.

Moreover, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and associated domain names, which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of its MARLBORO trademark to the Respondent.

Therefore, in light of the unrebuted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy.

C. Registered and Used in Bad Faith

This third element requires the Complainant to prove that the disputed domain name (1) was registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.

The disputed domain name incorporates the Complainant’s trademark MARLBORO.

The Panel finds the Respondent must have had knowledge of the Complainant’s mark MARLBORO and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being widely known; (ii) the disputed domain name is confusingly similar to the Complainant’s trademarks; and (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name.

Finally, with reference to the passive holding of the disputed domain name, given the similarity of the disputed domain name to the Complainant’s widely known MARLBORO trademark and in light of the Complainant’s long standing use of the same, the Panel agrees that Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with Complainant’s MARLBORO trademark. This is especially so given the Respondent’s choice to couple the Complainant’s mark with the word “free” to mislead users into thinking that the Complainant’s product may be obtained for free without any explanation from the Respodent, the Panel cannot conceive contemplated legitimate use under these circumstances.

Consequently, for all these reasons, the Panel finds that the Complainant has met the requirement of paragraph 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, <marlborosfree.site> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Date: April 11, 2017

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