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. D2017-0704
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("USA"), represented by Arnold & Porter Kaye Scholer LLP, USA.
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 Names and Registrar
The disputed domain names <marlbor.com> and <marlborl.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 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 names. On April 11, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <marlbor.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. As the revealed registrant in WIPO Case No. D2017-0704 and in WIPO Case No. D2017-0705 were the same, the Complainant requested a brief three-day extension until April 20, 2017 to submit either; (1) the Amended Complaints in both proceedings per the Notices of Change in Registrant Information; or (2) a single complaint naming Maddisyn Fernandes as the Respondent of the disputed domain names in both proceedings, <marlbor.com> and <marlborl.com>. The Center granted the extension of time and granted the request for the consolidation of the two cases. In response to the Center's request to the Registrar regarding the consolidation, the Registrar confirmed that the registrar lock would remain on both names during the proceedings.
The Center verified that the amended consolidated 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 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 24, 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 language of the proceeding is English.
4. Factual Background
The Complainant is a company specialized in manufacturing and selling cigarettes. The Complainant uses the mark MARLBORO to sell cigarettes in the USA ever since 1883, with the modern history of the brand beginning in 1955.
The Complaint is based on the Complainant's USA trademark registrations such as the US trademark No. 68,502 of April 14, 1908 for MARLBORO, covering goods in class 34. The Complainant's main website is available at "www.marlboro.com".
Previous UDRP panels have found that the Complainant's trademark MARLBORO is famous worldwide. See for example Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. Nicola Pieropan, WIPO Case No. D2011-1735; andPhilip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263.
The Respondent Maddisyn Fernandes, Fernandes Privacy Holdings was involved in several other UDRP proceedings involving famous third parties marks and all such cases being decided in the favor of the Complainant, two targeting Complainant's MARLBORO mark. See Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0607 for the domain names <marlboo.com> and <marloro.com>; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0196 for the domain name <chuymarlboro.com>; TPI Holdings, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0239 for the domain name <utotrader.com>; and LEGO Juris A/S v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-0053 for the domain name <legolanddicoverycenter.com>.
The disputed domain name <marlbor.com> was registered on December 22, 2004 and the disputed domain name <marlborl.com> was registered on July 13, 2006.
At the time of filing the Complaint, the Complainant states that both disputed domain names resolved to inactive websites that contained malware or spam. Both disputed domain names are used in connection to the same website that states in part: "CERTIFIED WINNER CLAIM FORM: Use the form below to claim your prize. You are guaranteed winner of one of the prizes listed to the left" and the form to be completed requires personal data such full name and address.
5. Parties' Contentions
The Complainant contends that the disputed domain names are confusingly similar to its famous trademark MARLBORO, the Respondent has no rights or legitimate interests in the disputed domain names and the Respondent registered and is using the disputed domains name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In view of the Respondent's default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for MARLBORO.
The dominant part of the disputed domain name <marlbor.com> incorporates the Complainant's famous trademark MARLBORO in its entirety with a typographical error, the omission of the letter "r"; and in the disputed domain name <marlborl.com> the last letter "o" in the trademark is replaced with the letter "l".
The majority view of UDRP panels agrees that a domain name which contains a common, obvious or intentional misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the domain name contains sufficiently recognizable aspects of the relevant mark and the misspelled trademark remains the dominant or principal component of the domain name. See paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Further, it is well established in decisions under the UDRP that indicators for generic Top-Level Domains (e.g., ".com", ".biz", ".net", ".org") are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. See paragraph 1.11 of WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names <marlbor.com> and <marlborl.com> are confusingly similar to the Complainant's trademark MARLBORO, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, "a complainant is required to make out a 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". See paragraph 2.1 of theWIPO Overview 3.0.
There is no evidence before the Panel to support the contrary, and therefore the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain names.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant's MARLBORO trademark is used in commerce since 1883 and has become famous worldwide.
The disputed domain names were registered a century after Complainant's first use of the mark, namely in 2004, respectively 2006 and incorporate the MARLBORO mark, both with a minor misspelling.
For the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its MARLBORO trademark.
The Respondent was part in several past UDRP disputes, two involving the Complainant and its MARLBORO trademark. Paragraph 4(b)(ii) of the Policy lists as a bad faith attitude the situation when the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Paragraph 3.1.2 of the WIPO Overview 3.0 explains that a pattern of conduct involves multiple UDRP cases with similar fact situations, where the respondent registered trademark-abusive domain names, even where directed at the same brand owner or corresponding to the distinct marks of individual brand owners. Here, the Respondent has been involved in at least other four similar UDRP cases involving Complainant and third-party trademarks and all decided in the favor of complainants, as listed under Section 4 above.
According to paragraph 3.4 of the WIPO Overview 3.0, UDRP panels have held that use of a domain name for purpose other than to host a website may constitute bad faith. Such purposes include, inter alia, malware distribution in order to obtain sensitive information or confidential personal information from prospective customers or Internet users accessing the websites corresponding to the disputed domain names. The Respondent has used without permission the Complainant's widely-known trademark in order to redirect Internet users looking for the Complainant's goods to get traffic to a web portal unrelated to the Complainant and to potentially obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. At the same time such use is likely to damage the Complainant's business and trademark reputation.
The Respondent registered the disputed domain names using a privacy shield and provided false contact information. Along with the other circumstances in this file, such facts corroborate bad faith. See also paragraph 3.6 of the WIPO Overview 3.0.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant's trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names <marlbor.com> and <marlborl.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <marlbor.com> and <marlborl.com> be transferred to the Complainant.
Date: June 7, 2017