WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Jamie Culbertson
Case No. D2017-0895
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("USA" or "US"), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Jamie Culbertson of Scottsdale, Arizona, USA.
2. The Domain Name and Registrar
The disputed domain name <marlboroiqcig.com> (the "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 May 4, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 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 May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2017.
The Center appointed W. Scott Blackmer 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 is a business corporation organized under Virginia law and headquartered in the Commonwealth of Virginia, USA. Altria Group, Inc., the Complainant's parent company, is a publicly traded corporation listed on the New York Stock Exchange. According to the parent company's website at "www.altria.com", the Complainant has been the largest US tobacco manufacturer for more than 30 years, and MARLBORO is one of its leading brands.
The Complainant or its predecessors have sold cigarettes under the MARLBORO trademark since 1883. The Complainant holds US Trademark Registration Number 68,502 for MARLBORO as a standard character mark (registered April 14, 1908). The Complainant operates a website at "www.marlboro.com". Given the long history of advertising, media articles, sports sponsorships, and successful sales associated with the trademark, several UDRP panels have concluded that MARLBORO is a famous mark in the United States. See, e.g., Philip Morris USA Inc. v. Branden Marks, WIPO Case No. D2017-0349.
The Domain Name was registered on January 7, 2017 in the name of a privacy service. At the request of the Complainant, the service identified the real party in interest as the Respondent, an individual residing in Scottsdale, Arizona, USA. The Respondent has not replied to communications from the Complainant or the Center.
It does not appear that the Respondent has used the Domain Name for an active website. At the time of this Decision, the Domain Name resolves to a landing page with pay-per-click ("PPC") advertising links for various third parties offering such items as "Cheap Marlboro Cigarettes," "Marlboro Coupons," and competing nicotine products such as liquid nicotine for e-cigarettes. The landing page is headed with the message, "This Web page is parked for FREE, courtesy of GoDaddy.com". It also includes solicitations from the Registrar to sell the Domain Name or develop an associated website.
5. Parties' Contentions
The Complainant observes that the Domain Name incorporates the MARLBORO mark in its entirety and argues that it is confusingly similar to the mark. The Complainant denies that the Respondent had permission to use the mark in the Domain Name and argues that there is no evidence that the Respondent had rights or legitimate interests in the Domain Name. The Complainant infers bad faith from the Respondent's "passive holding" of a Domain Name based on a famous mark to which it had no legitimate claim, combined with the Respondent's masking its identity with a domain privacy service.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complainant indisputably holds a registered MARLBORO trademark. The Domain Name incorporates this mark and adds "iq" (which often refers to "intelligence") and "cig" (a common abbreviation for "cigarette"). The Panel does not find that these generic additions avoid confusing similarity with the well-known and distinctive mark, particularly as the mark is associated precisely with cigarettes.
The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies any association with the Respondent. The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name, and none are evident from the Domain Name itself or from any use of the Domain Name. The Panel concludes, therefore, that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith". The Complainant does not rely on these illustrations, as the Respondent has not done anything with the Domain Name but allow it to be parked by the Registrar.
Instead, the Complainant infers bad faith from the Respondent's registration of a Domain Name based on a famous trademark to which the Respondent has no legitimate claim, masking the Respondent's identity behind a domain privacy service and making no active use of the Domain Name. The Complainant (citing the older WIPO Overview 2.0) relies on the "passive holding" doctrine that infers bad faith from the lack of plausible alternative reasons for a silent respondent to have registered and maintained a domain name that is based on a well-known and distinctive trademark other than, ultimately, to exploit the mark. See the current version of this analysis at WIPO Overview 3.0, section 3.3.
That reasoning is persuasive in this instance, because it is hard to imagine what legitimate reason the Respondent could have for registering and parking the Domain Name incorporating the Complainant's well-known mark along with a common English abbreviation for its product, cigarettes. But the Panel notes in addition that there is more than simply "passive use" in this case: more than half a year after registering the Domain Name, the Respondent still allows it to be used for commercial advertising for both competing and unrelated products, which is a misuse of the Complainant's mark. This should be considered bad faith in terms of the Policy, paragraph 4(b).
The Panel concludes on this record that the third element of the Complaint, bad faith, has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Name, <marlboroiqcig.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: July 3, 2017