WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Contact Privacy Inc. Customer 0146727690 / Eileen Diaz, Eilen web

Case No. D2017-0879

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 Contact Privacy Inc. Customer 0146727690 of Toronto, Ontario, Canada / Eileen Diaz, Eilen web of Carolina, Commonwealth of Puerto Rico.

2. The Domain Name and Registrar

The disputed domain name <coinsmarlborolight.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On May 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 5, 2017.

The Center verified that the Complaint together with the amended 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 June 1, 2017.

The Center appointed Lynda M. Braun as the sole panelist in this matter on June 19, 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 bearing the MARLBORO trademark. These 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. For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products. Specifically, the Complainant is the owner of the following MARLBORO trademarks, among others, on the Principal Register of the United States Patent and Trademark Office, which are valid, subsisting and incontestable: MARLBORO, United States Reg. No. 68,502, registered on April 14, 1908; and MARLBORO and Red Roof design, United States Reg. No. 938, 510, registered on July 25, 1972 (together, the “MARLBORO Mark”).

The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO Mark throughout the United States and has developed substantial goodwill in the MARLBORO Mark. The Complainant has an online presence, with its official website at “www.marlboro.com”.

The Respondent registered the Disputed Domain Name on December 8, 2016. The Disputed Domain Name does not resolve to any website.

5. Parties’ Contentions

A. Complainant

In summary, the following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to prevail in this proceeding:

(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 respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the MARLBORO Mark based on both long and continuous use as well as the trademarks that have been registered for decades. The Disputed Domain Name <coinsmarlborolight.com> consists of the MARLBORO Mark preceded by the descriptive word “coins”, followed by the descriptive word “light”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.

Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. This is especially true where, as in the present case, the descriptive word “light” is associated with the Complainant’s MARLBORO light cigarettes that the Complainant formerly manufactured and sold. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its MARLBORO Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, bad faith may be found where the Respondent knew or should have known of the registration and use of the MARLBORO Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. In the circumstances, such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the MARLBORO Mark.

The continuous and public use of the MARLBORO Mark would make it disingenuous for the Respondent to claim that he was unaware of the Complainant’s trademark rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration of the Disputed Domain Name, and the particular circumstances of this case, indicate that the Disputed Domain Name was registered in bad faith.

Second, in the circumstances of this case, by using the Disputed Domain Name passively and having no content on its web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335 (“The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.”); LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.

Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark is indicative of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the MARLBORO Mark.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <coinsmarlborolight.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: June 23, 2017