WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Arren Babayani
Case No. D2017-0724
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 Arren Babayani of Costa Mesa, California, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <marlboromarijuanapacks.com> (the “Disputed Domain Name”) 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 11, 2017. On April 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 11, 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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2017.
On April 19, 2017, the Respondent submitted three emails querying how to proceed with the case. On the same day, the Center notified the Parties the proceeding was suspended until May 19, 2017 upon the Complainant’s request. On April 25, 2017, the Respondent submitted three emails querying the fee of the proceeding and indicating that he has not received the Written Notice by courier. The Complainant filed a request to reinstitute the proceeding on April 25, 2017. Accordingly, on April 26, the Center notified the Parties that the proceeding was reinstituted and the response due date was May 16, 2017. The Respondent did not submit a substantive response by the specified due date. Accordingly, the Center notified the Parties the commencement of panel appointment process on May 17, 2017. The Complainant filed a supplemental filing on May 18, 2017.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on May 31, 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 is the registered owner of the trademark MARLBORO, which is well-known for its tobacco and smoking-related products. Marlboro cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955.
The Complainant is the owner of two respective registered trademarks. The trademark MARLBORO was registered on April 14, 1908 (Registration No. 68,502) and MARLBORO and Red Roof design, which was registered on July 25, 1972 (Registration No. 938,510). Both trademarks are registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the goods of cigarettes.
The Complainant registered and uses the domain name <marlboro.com>, which enables access to information regarding the Marlboro products.
The Respondent registered the Disputed Domain Name <marlboromarijuanapacks.com> on December 27, 2016. Until now the Respondent has not used the Disputed Domain Name. The website resolves to an error message reading the sentence “Website coming soon”.
5. Parties’ Contentions
a. The Complainant alleges that the Disputed Domain Name is identical or confusingly similar to the Complainant’s mark because:
i. The Disputed Domain Name incorporates the mark in its entirety, which was classified as confusingly similar by the panel in Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675.
ii. Courts and UDRP panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int’l, L .P .v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) (“A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name.[ . . ]. A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.”) (internal citations omitted); see also Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872.
iii. The mere addition of the generic word “marijuana” and “packs” in the Disputed Domain Name only exacerbates public confusion because it falsely suggests that the Complainant is marketing or intends to market a marijuana cigarette online.
iv. Through the widespread use of the MARLBORO trademark, the word MARLBORO has become distinctive and uniquely associated with the Complainant and its products. Numerous UDRP panels already have determined that the MARLBORO trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide.”); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 (May 15, 2012) (“Respondent creates a likelihood of confusion with the Complainant’s famous trademark and deprives the Complainant from offering its products to prospective clients […].”); Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 (“finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels”); and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (recognizing the fame of the MARLBORO trademarks).
b. The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name because:
i. 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 word “Marlboro”. On information and belief, 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 the Respondent registered and began using the Disputed Domain Name, or at any other time since. In addition, the WhoIs record associated with the Disputed Domain Name does not identify the Respondent by the Disputed Domain Name. The Complainant also notes that, before any notice to the Respondent of this dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent or commercial gain, as the Disputed Domain Name points merely to an inactive website.
ii. The Respondent used this trademark to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the MARLBORO trademarks. As the panel found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant” and thus illegitimate users such as the Respondent could have no legitimate interest in the trademark. A previous UDRP panel commented that it was “inconceivable” for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks “given the longtime use of the MARLBORO trademarks and strength of its brand”. Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790.
iii. When the Respondents, such as the Respondent here, fails to make any use of the Disputed Domain Name, merely pointing the Disputed Domain Name to an inactive website, Respondent has no rights or legitimate interests in the domain names. See, e.g., Société nationale des télécommunications: Tunisie Telecom v. Isamel Leviste, WIPO Case No. D2009-1529 (noting that passive holding of a disputed domain name “does not constitute a legitimate use of such domain name” that would give rise to a right or legitimate interest in the name).
c. The Respondent has registered and is using the Disputed Domain Name in bad faith because:
i. The Respondent had the fully knowledge of the Complainant’s rights in the MARLBORO trademarks. The Panel decisions involving the Complainant’s MARLBORO trademarks reflect this reasoning in finding bad faith. See, e.g., Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case D2014-2264 (“Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s MARLBORO Trademarks significantly pre-date Respondent’s registration of the Domain Name and in light of the long-established and widespread use and the protection of the MARLBORO Trademarks that Respondent knew or ought to have known of Complainant’s prior rights.”); Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was “inconceivable” that the respondent “was not aware of the MARLBORO trademarks”).
ii. The Complainant’s rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online. The Respondent is deemed to have constructive notice of the Complainant’s trademark rights by virtue of the Complainant’s federal registrations for those of the MARLBORO trademarks. See Marconi Data Systems, Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. D2000-0090.
iii. The Respondent’s very method of infringement — using the exact MARLBORO trademarks to divert Internet users from the Complainant’s true website — demonstrates bad faith use under the Policy. See, e.g., Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith) (citations omitted).
iv. By combining the MARLBORO trademark with the term “marijuana” in the Disputed Domain Name, the Respondent is falsely suggesting that the Complainant is marketing a marijuana cigarette online; thus, the Respondent has registered and is using the Disputed Domain Name in bad faith. Marijuana is unlawful under USA federal law (the Controlled Substances Act, 21 U.S.C. 801 et seq.) and the law of some U.S. states. In an analogous case involving the MARLBORO trademark, a UDRP panel held that multiple domain names combining “marlboro” with terms synonymous with marijuana, i.e., “weed” and “kush”, were registered and used in bad faith. Philip Morris USA Inc. v. Andrew Soto, WIPO Case No. D2016-0247 (ordering transfer to the Complainant of <marlborokush.com> and <marlboroweedman.com> and finding that “Respondent went a step further by combining Complainant’s famous mark with the terms “weed” and “kush”, conflating Complainant’s marks with unlawful smoking materials.”).
The same reasoning applies here: by combining the MARLBORO trademark with the term “marijuana”, the Respondent has intentionally tarnished the Complainant’s intellectual property rights and registered and used the Disputed Domain Name in bad faith.
v. The registration and use of the Disputed Domain Name creates a form of initial interest confusion, which attracts Internet users to the Disputed Domain Name based on the use of the MARLBORO trademarks. This is further evidence that the Disputed Domain Name is being used in bad faith. See, e.g., Osuuspankkikeskus Osk v. RegisterFly.com, WIPO Case No. D2006-0461 (referencing initial interest confusion in the panel’s finding of bad faith registration and use).
vi. The Disputed Domain Name currently resolved to an inactive website. This also reveals bad faith use. See paragraph 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent did not submit a substantive response. In one of his emails, the Respondent asserted that “my intent wasn't to infringe it is to create a business website for the city we are from in Marlborough New Jersey. There are many uses for That name Marlboro college for example. Marlboro fitness for another one.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant’s Supplemental Fling is not discussed as it is not necessary for the resolution of this case.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's mark.
The disputed domain name <marlboromarijuanapacks.com> contains sufficient similarity to the Complainant’s trademark MARLBORO. The Complainant’s trademark is incorporated in its fully in the Disputed Domain Name. The Respondent just added an additional word to it.
B. Rights or Legitimate Interests
It is undisputed that the Respondent has not been authorized by the Complainant to use its MARLBORO mark as a domain name or otherwise.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent, see Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, the Complainant needs only to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Upon such a showing, the burden of productions shifts to the Respondent to demonstrate his rights or legitimate interests in the Disputed Domain Name.
In this case the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
(1) The Respondent has never registered any trademark in any form and is not commonly known by the Disputed Domain Name;
(2) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark;
(3) The Respondent's use of the Disputed Domain Name is not in a bona fide offering of goods or services, and does not constitute any legitimate noncommercial or fair use.
The Respondent did not reply substantively to the Complainant’s contentions. Therefore the only plausible reason, in the view of the Panel, for the Respondent to register the Disputed Domain Name was to divert Internet users to the Respondent’s website by implying an affiliation with or sponsorship by the Complainant or that the Complainant approves of and sanctions the Respondent’s website, see Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where the Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant’s site to a competing website); The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding that the Respondent’s use of the disputed domain names is confusingly similar to the Complainant’s mark, and the Respondent’s use to sell competing goods was an illegitimate use and not a bona fide offering of goods. This is neither noncommercial nor fair use of the disputed domain name.)
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.
The third element of the Policy requires that the Complainant establish that the Disputed Domain Name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
(i) circumstances indicating that you [the Respondent] have registered or you [the Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [the Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your location.
The Panel finds that at the minimum the circumstance set out in paragraph (b)(iv) of the Policy is fulfilled here. In the Panel's view there is sufficient evidence that leads to the finding that the Respondent acquired the Disputed Domain Name primarily for the purpose of attracting Internet users to the Respondent’s website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or services on said website.
Although no immediate commercial gain is obtained through this confusion, the Respondent’s purpose for the website appears to gain the trust of the Internet user into believing the website belongs to the Complainant. Internet users may especially believe, that the website belongs to the Complainant, because both the Complainant and the Respondent may be considered situated in the tobacco industry and Marlboro products are as well as marijuana a smoking related product.
The Complainant’s reputation is tarnished by the conjunction of the trademark MARLBORO with the (in many jurisdictions) illegal substance of Marijuana. The Respondent’s sole purpose for the website appears to gain the trust of the Internet user into believing the website belongs to the Complainant.
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 <marlboromarijuanapacks.com> to be transferred to the Complainant.
Maxim H. Waldbaum
Date: June 2, 2017