WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Xiyu Zheng

Case No. D2017-0703

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 Xiyu Zheng of Wenzhou, China.

2. The Domain Name and Registrar

The disputed domain name <marlborolighter.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 April 7, 2017. On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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 April 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. Two email communications sent by the Respondent were received by the Center on April 24, 2017. On May 12, 2017, the Center notified the Parties of the commencement of the Panel appointment process.

The Center appointed Steven A. Maier as the sole panelist in this matter on June 23, 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.

The Panel determines that the Respondent’s email communications dated April 24, 2017 shall stand as the Response in this proceeding.

4. Factual Background

The Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia, United States. It is a manufacturer and supplier of cigarettes and tobacco products under the brand name and trademark MARLBORO.

The Complainant is the owner of various trademark registrations including United States trademark number 68502 for a stylized character mark MARLBORO, registered on April 14, 1908 for tobacco products in Class 34.

The disputed domain name was registered on September 28, 2016.

The Complainant has submitted evidence by way of a screen capture that the disputed domain name has not resolved to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the name and mark MARLBORO and variations of that mark for many decades in connection with the sale of tobacco and smoking-related products. It states that it has spent substantial time, effort and money on promoting its MARLBORO trademarks and cites numerous previous decisions under the UDRP holding that its MARLBORO trademark is well known or famous worldwide. The Complainant also refers to its website at “www.marlboro.com” and exhibits evidence of its promotional materials found on that website.

The Complainant submits that the disputed domain name <marlborolighter.com> is confusingly similar to a trademark in which the Complainant has rights. The Complainant states that the disputed domain name wholly incorporates its trademark MARLBORO and that the addition of the generic word “lighter” does not dispel any confusion with the Complainant’s mark. On the contrary, the Complainant argues that the disputed domain name is suggestive of a MARLBORO branded lighter originating from the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has no affiliation with the Complainant, that the Complainant has never authorized the Respondent to use its trademark MARLBORO, and that the Respondent has never been known by any name incorporating that mark. The Complainant denies that the Respondent has made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services or that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. In particular, the Complainant contends that the Respondent chose the disputed domain name in order to capitalize on the public recognition of its MARLBORO trademarks and that, given the Complainant’s history and the fame of the MARLBORO trademark, it is inconceivable that the Respondent was unaware of that mark when it registered the disputed domain name. The Complainant adds that a simple Internet search would in any event have revealed the fame of the Complainant mark. The Complainant also argues that the Respondent’s use of the connected term “lighter” in connection with the Complainant’s trademark further evidences bad faith on the part of the Respondent.

B. Respondent

The Respondent’s first April 24, 2017 email stated:

“Dear All

Domain name and articles brand are two different concepts.

There is no relevant stipulation about domain name in law.

We will not cancel the domain name.

If you do want this domain name, we can transfer it to you. But what amount will you make payment for us?

Sincerely

Monies”

The Respondent’s second April 24, 2017 email stated:

“Dear All

We just applied for adn domain name registration without any commercial interests yet.

Domain name and articles brand are two different concepts.

There is no relevant stipulation about domain name in law.

We will not cancel the domain name.If you do want this domain name, we can transfer it to you. But what amount will you make payment for us?

Sincerely

Monies”

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

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

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

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of longstanding and distinctive registered trademark rights for the mark MARLBORO in connection with tobacco-related products. The disputed domain name incorporates the Complainant’s trademark in its entirely together with the term “lighter”. The Panel finds that the inclusion of this generic term does not dispel any risk of confusion with the Complainant’s trademark, but rather adds to that risk being a term related to tobacco smoking. Accordingly the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Panel finds that the contents of the Respondent’s emails dated April 24, 2017 do not provide any reasonable explanation for the Respondent’s registration and use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. The Panel having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In the light of the Complainant’s evidence concerning the reputation of its trademark MARLBORO and the lack of any explanation from the Respondent for its choice of the disputed domain name, the Panel finds it overwhelmingly likely that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and with the intention of taking unfair advantage of the goodwill attaching to that trademark. The Panel also accepts the Complainant’s submission that the use of the smoking-related term “lighter” in conjunction with the Complainant’s trademark adds to the inference of bad faith.

The Panel is not of the view that the Respondent’s “passive” holding of the disputed domain name displaces the inference of bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), nor that the content of the Respondent’s April 24, 2017 emails in any way assists the Respondent’s case. On the contrary, the Panel readily concludes from the submissions and evidence in this proceeding, including the Respondent’s emails soliciting a monetary offer for the disputed domain name, that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for an inflated sum (paragraph 4(b)(i) of the Policy) and/or with the intention of attracting Internet users to the Respondent’s website (whether active or not) by creating a likelihood of confusion with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy).

In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <marlborolighter.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: June 27, 2017