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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Protection Domain / Above.com Domain Privacy

Case No. D2017-0432

1. The Parties

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

Respondent is Protection Domain of Tumba Muerto, Panama Ciudad, Panama / Above.com Domain Privacy of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <malboro.com> is registered with Above.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 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 Complainant on March 9, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on March 10, 2017.

The Center verified that the Complaint together with the amended 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 March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 13, 2017.

The Center appointed Bernhard Meyer as the sole panelist in this matter on April 28, 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, Philip Morris USA Inc. (hereinafter PM USA), manufactures, markets and sells cigarettes in the United States. The trademark MARLBORO was registered on April 14, 1908, in the United States in class 34 (registration number 68,502). Complainant is also the owner of the domain name <marlboro.com>, the site resolving to Complainant's official website for its Marlboro products and created on March 6, 2000.

The disputed domain name <malboro.com> was registered on June 23, 2012.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its MARLBORO trademark in which it has rights and that Respondent lacks any rights or legitimate interest to reflect the MARLBORO trademark in the disputed domain name.

Complainant alleges that, given the fame of its MARLBORO trademark pre-dating the disputed domain name for long, Respondent must have had full knowledge of Complainant's rights at the time of registration. Complainant is furthermore convinced that Respondent intentionally created a domain name confusingly similar to its trademark with in the attempt of attracting Internet traffic to its website, which spreads malware. This, Complainant contends, constitutes bad faith registration and use of the disputed domain name.

Complainant finally submits that Respondent's bad faith registration and use of the disputed domain name is further supported by Respondent's attempt to conceal its true identity to the public.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, notwithstanding Respondent's default, Complainant must establish that:

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

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and that

(iii) the disputed domain name was registered and has been used in bad faith.

In the following, the Panel reviews the different elements.

A. Identical or Confusingly Similar

The disputed domain name <malboro.com> differs from Complainant's trademark MARLBORO by the omission of an "r" between "a" and "l".

Panel views the term "malboro" as an obvious truncation or misspelling of the famous trademark MARLBORO, a trademark uniquely associated with Complainant, PM USA, and Complainant's products. Such practice is commonly referred to as typosquatting and has consistently been regarded as creating domain names confusingly similar to the respective trademarks (see for instance RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190, and Nationwide Mutual Insurance Company (Nationwide) v. PrivacyProtect.org/ HEMANG INFRASTRUCTURE PRIVATE LIMITED, WIPO Case No. D2013-1842, and others).

Thus, the Panel concludes that the disputed domain name is confusingly similar to Complainant's trademark MARLBORO and the requirements of paragraph 4(a)(i) are fulfilled.

B. Rights or Legitimate Interests

Complainant has established that it has exclusive rights in the trademark MARLBORO. It also asserts that Respondent has not been authorized to use its trademark in any manner.

In its Complaint, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Hence, the burden to submit evidence for having rights or legitimate interests to reflect Complainant's trademark in the disputed domain name shifts to Respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1).

Respondent has chosen to remain silent. Therefore, it is the Panel's view that Respondent's typosquatting behavior manifests a lack of rights and legitimate interests in the disputed domain name and the Panel holds that paragraph 4(a)(ii) has been met.

C. Registered and Used in Bad Faith

Complainant included in its Complaint screenshots of the website at the disputed domain name <malboro.com>. One screenshot reveals that the content of the respective website is a "reported attack page". Another warns users that "the site ahead contains malware", and again another displays a site congratulating the user of the chance of winning a prize, should the user participate in an "annual visitor survey". In addition, the documentation provided in the Complaint shows that Respondent utilized a privacy shielding service to conceal its true identity from the public.

With this undisputed evidence at hand, the Panel finds that the facts support a finding of Respondent's intention to attract Internet users to its website at the disputed domain name <malboro.com>, by creating a likelihood of confusion with Complainant's trademark MARLBORO, and thus creating confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name <malboro.com>. The sole purpose appears to have been to cause damage to Internet users by spreading malware. Such behavior clearly demonstrates Respondent's bad faith, both in registering and using the disputed domain name in such manner. Given the fame of Complainant's MARLBORO trademark, Respondent must have had full knowledge of what it was doing. The deployment of a privacy shielding service to conceal Respondent's identity corroborates the Panel's finding of Respondent's bad faith.

Accordingly, the Panel holds that the prerequisites of paragraph 4(a)(iii) are fulfilled.

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, <malboro.com>, be transferred to Complainant.

Bernhard Meyer
Sole Panelist
Date: May 12, 2017

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