WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Sergei Igumnov / Private Person
Case No. D2017-0725
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 Sergei Igumnov / Private Person of Samarskaya, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <cowboymalboro.biz> and <malboro.biz> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 names. On April 12, 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 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 12, 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 US 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”.
The Complainant’s main marketing campaign for its MARLBORO brand is in association with an iconic theme having the “Marlboro man” cowboy image set against Western landscapes.
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. Pieropan, WIPO Case No. D2011-1735; andPhilip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263.
The disputed domain name <malboro.biz> was registered on January 18, 2017 and at the time of filing the Complaint, it resolved to a web page providing links to various goods and services, which linked to pages with pay-per-click links.
The disputed domain name <cowboymalboro.biz> was registered on January 18, 2017 and at the time of filing the Complaint, it was not linked to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or 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 domain names 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 is 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 name; and
(iii) the disputed domain name has been registered and is 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 <malboro.biz> incorporates the Complainant’s famous trademark MARLBORO in its entirety with a typo error, the omission of the letter “r”.
The majority view of UDRP panels agrees that 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 paragraph 1.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Further, the disputed domain name <cowboymalboro.biz> incorporates the Complainant’s trademark with the same misspelling together with the generic word “cowboy”.
Numerous UDRP panels have considered that the addition of generic wording to trademarks in a domain name is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the domain name as being connected to a complainant’s trademark. See paragraph 1.9 of the WIPO Overview 2.0.
Having in mind the Complainant’s iconic image and advertising campaign with cowboys and Western theme for MARLBORO mark, the Panel concludes that such addition in fact deepens the likelihood of confusion between the disputed domain name <cowboymalboro.biz> and the Complainant’s trademark.
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and 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.
Given the above, the Panel finds that the disputed domain names 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 the WIPO Overview 2.0.
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 MARLBORO trademark is used in commerce since 1883 and, as found by previous UDRP panels, the MARLBORO trademark is famous worldwide, as mentioned under section 4 above.
The disputed domain names were registered in 2017 and incorporate the MARLBORO mark with a minor misspelling; the disputed domain name <cowboymalboro.biz> also contains the generic term “cowboy”, an iconic image for the Complainant’s advertising campaigns for its MARLBORO brand.
For the above, the Panel concludes that the Respondent registered the disputed domain names knowing and targeting the Complainant and its trademark.
According to the case file evidence, at the time of filing the Complaint the disputed domain name <malboro.biz> was used to divert Internet users to a website providing links to various goods and services, which linked to pages with pay-per-click links. Registering and using a domain name that reproduces without authorization the Complainant’s famous mark, using such domain name for a webpage which promotes third party’s goods and services, diverting Internet users searching for the Complainant to the Respondent’s website dilutes the value of the Complainant’s mark, potentially generates unfair revenues for the Respondent and ultimately constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Further, the disputed domain name <cowboymalboro.biz> was not linked to an active website. As it is well established by the long line of cases from Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions. According to the consensus view of UDRP panels summarized in the paragraph 3.2 of the WIPO Overview 2.0, “panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.”
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names <malboro.biz> and <cowboymalboro.biz> 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 <cowboymalboro.biz> and <malboro.biz> be transferred to the Complainant.
Date: May 18, 2017