WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Dmitriy Barinov
Case No. D2017-0762
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA” or “United States”), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Dmitriy Barinov of Vladimirskaya oblas, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <cowboymarlboro.biz> (the “Domain Name”) is registered with GuangDong NaiSiNiKe Information Technology Co Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed in Chinese with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 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. On May 2, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding and provided an English translation of the Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 6, 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, including cigarettes under its MARLBORO trademark. The Complainant (and various predecessor entities) has sold cigarettes under MARLBORO trademark since 1883, with the modern history of the brand beginning in 1955.
The Complainant owns trademarks such as United States Patent and Trademark Office registration number 68,502 (registered on April 14, 1908) and registration number 938,510 (registered on July 25, 1972), both for MARLBORO.
The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trademark.
The Complainant has registered the domain name <marlboro.com>.
At the time of filing of the Complaint, the Domain Name resolved to an active, commercial website advertising and offering to sell crystal products. At the time of drafting this decision, the Domain Name does not resolve to an active website. The Domain Name registration expires January 9, 2018.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that its trademark is famous. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name incorporates the Complainant’s trademark in its entirety, in combination with the descriptive term “cowboy”. The mere addition of the word “cowboy” does not distinguish the Domain Name from the Complainant’s trademark. The Complainant argues that the combination of “marlboro” with “cowboy” exacerbates the likelihood of confusion as the combination deliberately evokes the Complainant’s “Marlboro Man” cowboy and its western theme marketing campaign, thus creating a likelihood of confusion with the Complainant’s Western images.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the MARLBORO trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent has no rights or legitimate interests in the Domain Name. The Complainant does not believe the Respondent has any 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 term “marlboro”. To the Complainant’s knowledge, the Respondent has never sought or obtained any trademark registrations for the term “marlboro” or any variation thereof. The Respondent has not received any license, authorization, or consent to use the MARLBORO trademarks.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s famous trademark at the time of the registration of the Domain Name. Further, the Respondent uses the Domain Name to divert Internet users from the Complainant’s website by creating a likelihood of confusion with the Complainant’s famous MARLBORO trademarks. Also pointing to bad faith, the use of “cowboy” in the Domain Name, deliberately evoking the Complainant’s marketing. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather, the Domain Name has pointed to a commercial website that sells crystal products. The Respondent’s sale of crystal products for commercial gain is not a bona fide offering of goods under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark MARLBORO.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark MARLBORO with the word “cowboy” added in front. This addition does not dispel any confusing similarity. On the contrary, it adds to the confusion.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.biz”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Domain Name has resolved to a commercial website selling crystals. Such use with the disputed domain name consisting of the Complainant’s trademark is not considered to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
There is no evidence on the record to show that the Respondent is generally known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name. This is underlined by the fact that the Respondent has added “cowboy” in the Domain Name, deliberately pointing to the Complainant’s marketing.
The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Name to divert Internet users from the Complainant’s website by creating a likelihood of confusion with the Complainant’s famous MARLBORO trademarks. The Domain Name resolved to a commercial website selling crystals. The Panel finds that on the balance of probabilities the Respondent registered and uses the Domain Name in bad faith. The finding is supported by the fact that the Respondent has not responded to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name <cowboymarlboro.biz> be transferred to the Complainant.
Date: June 9, 2017