WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin, Whois Privacy Corp.
Case No. D2017-0607
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter Kaye Scholer LLP, United States of America.
The Respondent is Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, (Plurinational State of Bolivia) / Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain names <marlboo.com> and <marloro.com> are registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 30, 2017, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 31, 2017.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on May 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 manufactures markets and sells cigarettes in the United States under the trademark MARLBORO (including United States trademark registration number 68,502, registered on April 14, 1908). The Complainant’s cigarettes have been sold by the Complainant since 1883. The Complainant has used its trademark in connection with its products for many decades.
The Complaint was initially brought against Whois Privacy Corp., a privacy protection service, as that service was listed in the registration details then available to the Complainant. The Complainant filed the Complaint noting that this privacy service was not the real registrant of the disputed domain names, and that it would amend the Complaint should the real identity of the Respondent be divulged.
Subsequently, the the Registrar confirmed that the identity of the Respondent was Maddisyn Fernandes, Fernandes Privacy Holdings, with an address listed as La Paz, Plurinational State of Bolivia. The Center sent a communication to the Complainant inviting it to amend the Complaint based on the updated registrant information, although making clear that the Complainant was not required to do so. The Complainant submitted such an amended Complaint on March 31, 2017.
The Complainant states that the disputed domain names resolve to inactive websites that contained malware or spam. The website to which the disputed domain name <marlboo.com> points states in part: “You Can Stop Search Engines From Tracking You In 2 Simple Steps”. The disputed domain name <marloro.com> points to a website that states “Dear Marlboro Visitor” and displays a purported survey inquiring about the user’s “shopping at Marlboro”, urging the Internet visitor to complete the survey to get a free gift. The Complainant provided evidence of screenshots of the Respondent’s websites.
Both of the disputed domain names were registered on December 3, 2005.
5. Parties’ Contentions
The Complainant says that its mark has become distinctive and uniquely associated with the Complainant and its products. The Complainant also refers to past decisions under the Policy which support this conclusion.
The Complainant says that the disputed domain names are confusingly similar to its MARLBORO trademarks, as both contain obvious misspellings of the Complainant’s marks.
The Complainant says that the Respondent has no connection or affiliation with the Complainant. The Respondent’s use of the <marloro.com> to lure Internet visitors into providing their personal information in the guise of a survey does not support any finding of rights or legitimate interests in that domain name.
The Complainant says that the Respondent has registered the disputed domain names in bad faith by doing so with full knowledge of the Complainant’s rights in its marks. The Complainant’s marks significantly
pre-date the Respondent’s registration of the disputed domain names, and are famous. A simple Internet search would have revealed the Complainant’s extensive use of its marks, and the Respondent is deemed to have constructive notice of them. The fact that the Respondent holds two domain names incorporating the Complainant’s mark further manifests bad faith.
The Complainant further says that the Respondent has used the disputed domain names in bad faith by diverting Internet users to its websites. The Respondent was also masking its identity by using a privacy service. The webpages, to which the disputed domain names resolve, contain malware and spam.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered in bad faith and are being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below, immediately after a brief discussion of a procedural issue relating to the time between the registration of the disputed domain names and the filing of the Complaint.
A. Delay in bringing the Complaint (“Laches”)
As confirmed by the Registrar, the disputed domain names were both registered in 2005. From the Registrar’s response, the Panel has inferred that the disputed domain names were both registered by the Respondent at that time. The Complainant says that it discovered the registrations in 2016 when searching for domain names that may infringe the Complainant’s trademarks.
This means that the disputed domain names have been registered for well over 10 years before the Complaint was brought. Is this an undue delay which counts against the Complainant?
In the circumstances of this case, the Panel does not consider that the time between the 2005 creation date of the disputed domain names and the filing of the Complaint in 2017 presents an undue delay. Even if it did, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256.
In addition, the Panel does not consider that the evidence indicates that the Complainant should have been earlier aware of these particular registrations. The Complainant’s marks have been the subject of a number of UDRP disputes. There is an obviously large number of potential variants on the Complainant’s mark from typographical changes of the magnitude in issue in this case. There is no other evidence in the case file that suggests that the Complainant should have been alerted to the Respondent’s registrations at some earlier point.
B. Identical or Confusingly Similar
The Complainant has provided evidence of its registered rights in its MARLBORO mark. The Panel considers that both of the disputed domain names are confusingly similar to that mark. Both of the disputed domain names are different to the Complainant’s mark by only missing either the letter “r” in one case, and the letter “b” in the other. These are relatively trivial differences which do not substantially detract from the similarity of overall impression between the disputed domain names and the Complainant’s mark.
Comparable differences have been the subject of at least one previous UDRP dispute involving the Complainant’s mark. In Philip Morris USA Inc. v. George Liarakos, WIPO Case No. D2015-1789, the Complainant’s mark was only different from the domain name then in dispute by the omission of the “r” between “a” and “l”. In finding confusing similarity, the Panel noted that:
“Such insignificant modifications to trademarks are commonly referred to as ‘typosquatting’. A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition section 1.10 of the “WIPO Overview 2.0”).
This Panel reaches a similar conclusion and finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As outlined in paragraph 2.1 of the WIPO Overview 2.0, “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant in this case has made out a prima facie case by its arguments and evidence outlined above. In the face of this, the Respondent has not submitted any Response or otherwise communicated in connection with this case. There is otherwise no evidence in the case file that the Respondent might have rights or legitimate interests and, for the reasons set out further below in relation to bad faith, the evidence which is available suggests strongly that the Respondent has no such rights.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant argues that the Respondent registered the disputed domain names in bad faith because it was done with full awareness of the Complainant’s mark. The Complainant says that the disputed domain names have been used in bad faith because of the use of the disputed domain names to divert Internet users to the Respondent’s website, the Respondent’s use of a privacy service, and evidence that:
- The website to which <marlboo.com> states in part: “You Can Stop Search Engines From Tracking You In 2 Simple Steps” and offers an apparent extension to the Chrome browser to “stop search engines from tracking you for FREE”.
- The disputed domain name <marloro.com> points to a website that states “Dear Marlboro Visitor” and displays a purported survey stating “complete the short survey about shopping at Malboro to accept your exclusive gift of up to $60 case value”.
The Complainant says that, in each of these cases, the Respondent’s websites “contain malware and spam”. The Complainant provides no direct evidence to support this claim.
The Complainant’s arguments go primarily towards the form of bad faith described in paragraph 4(b)(iv) of the Policy. This paragraph provides that there is evidence of the registration and bad faith use of a disputed domain name in circumstances where “by using the 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 your website or location or of a product or service on your website or location.”
The Panel considers that there is strong evidence that the various elements that demonstrate bad faith under paragraph 4(b)(iv) are made out in this case:
Firstly, it is obvious that the disputed domain names are being relevantly used to connect to websites that purport to offer products or services.
Secondly, there is compelling evidence that the Respondent has intentionally attempted to attract Internet users for commercial gain. The Panel does not think it likely that the Respondent went to the trouble of registering and using the disputed domain names, and offering apparent products or a service, for no financial reward. The nature of that reward is not clear from evidence in the case file. But this is not a factor that counts against the Complainant. The precise nature of the reward that might have motivated the Respondent can, ultimately, only be within the particular knowledge of the Respondent. And the Respondent’s failure to come forward to provide this evidence cannot reasonably be a factor that helps his case.
Thirdly, it is reasonably clear that the Respondent made a deliberate choice to register domain names that are confusingly similar to the Complainant’s mark. The Respondent was no doubt aware of the Complainant’s mark. Notwithstanding the slight difference with that mark in the disputed domain names, one of the Respondent’s websites accurately refers to the Complainant’s MALBORO trademark. The Respondent’s registration, at the same time, of two different domain names, that both contain slight misspellings of the Complainant’s mark, can only reinforce the conclusion that this was done deliberately to create confusion with the Complainant’s mark. Moreover, the Complainant’s mark is famous and widely known. The fame of the Complainant’s mark has been recognized in previous decisions under the Policy: see, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306. This evidence suggests it was even more likely that the Respondent was well-aware of the Complainant’s mark.
Paragraph 4(b) is illustrative of circumstances that may demonstrate bad faith. There are other factors in this case that further support such a conclusion:
The Respondent has used a privacy service mask its identity. As noted in the paragraph 3.9 of the WIPO Overview 2.0, the “Consensus view” among panelists on this issue is that: “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.” In this case, the Respondent made no attempt to reveal its actual registration, or provide any evidence of the nature of his activities or business. This is suggestive to the Panel that the use of a privacy service was a deliberate attempt to avoid easy identification, and contributes to a finding of bad faith.
Another factor going towards the Respondent’s bad faith is the fame of the Complainant’s mark, and the absence of an explanation from the Respondent from the obvious presumption this creates – which is that the this confusion was deliberate. In previous cases under the Policy, the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be itself an indication of bad faith. See e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
A final factor, mentioned by the Complainant, is the claim that the disputed domain names have been used in connection with some malware or spam. While there is no direct evidence of this, the nature of the Respondent’s websites are somewhat suggestive of some malicious intent. Both websites seek the visitor to click on a download or to complete a “survey”. The illegitimacy by which an Internet user is led to this point (confusion with the Complainant’s mark) does not provide much confidence that these features of the Respondent’s website are themselves legitimate.
For all these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <marlboo.com> and marloro.com> be transferred to the Complainant.
James A. Barker
Date: May 17, 2017