WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Alex Sokol
Case No. D2017-0941
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 Alex Sokol of Chelyabinsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <covboymarlboro.biz> (the "Domain Name") is registered with GuangDong NaiSiNiKe Information Technology Co Ltd (the "Registrar").
3. Procedural History
The Complaint in Chinese was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15 and 16, 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, and the language of the Registration Agreement for the Domain Name is English.
On May 16, 2017, the Center sent an email communication to the Parties in both English and Chinese regarding the language of the proceeding. On the same day, the Complainant submitted a translated Complaint into English and requested that English be the language of the proceeding. The Respondent did not reply to this communication.
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 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2017.
The Center appointed Linda Chang as the sole panelist in this matter on June 15, 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, including cigarettes under its famous MARLBORO trademark. MARLBORO cigarettes have been made and sold by the Complainant since 1883, with the modern history of the brand beginning in 1955. Specifically, the Complainant has made extensive use of a specific western theme in connection with its MARLBORO cigarettes, including, among other things, images of a cowboy set against western landscapes.
The Complainant is the registered owner of various MARLBORO trademarks, among others, US Registration No. 68,502, registered on April 14, 1908, and US Registration No. 938,510, registered on July 25, 1972, for cigarettes.
The Domain Name was registered by the Respondent on March 6, 2017, and once resolved to a website appearing to offer for sales crystal products.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the MARLBORO trademark. The mere addition of the letters "covboy", an obvious and intentional misspelling of the generic word "cowboy", does not distinguish the Domain Name from the MARLBORO trademark, but exacerbates the likelihood of confusion.
The Complainant further contends that 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 trademark. The Respondent was never known by any name or trade name that incorporates the word "Marlboro". The Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent or commercial gain by pointing the Domain Name to a website that appeared to sell crystal products. The Respondent thus has no rights or legitimate interests in the Domain Name.
The Complainant finally contends that the Respondent registered the Domain Name in bad faith by doing so with full knowledge of the Complainant's rights in the MARLBORO trademark, which greatly pre-dates the Respondent's registration of the Domain Name. The Respondent's use of the misspelling and typographical error of "cowboy" demonstrates bad faith use of the Domain Name, by intentionally evoking the Complainant's cowboy image. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name by pointing it to a commercial website advertising and offering to sell for profit crystal products. The Respondent therefore registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
According to paragraph 11 of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The registration agreement of the Domain Name is in English and in Chinese. Considering that the Complainant has submitted the Complaint in English, and that the Respondent did not object to the use of English being the language of the proceeding after notified of the Complainant's language request in English, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the famous MARLBORO trademark.
The Panel agrees that the addition of the letters "covboy" to the brand name MARLBORO is not sufficient to distinguish the Domain Name from the Complainant's MARLBORO trademark which has been very well known across countries for a long time. The Panel views this misspelling of the word "cowboy" to be "typosquatting", which creates confusing similarity with the Complainant's mark.
Accordingly, the Panel finds the Domain Name is confusingly similar to the Complainant's MARLBORO trademark.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not connected or affiliated with the Complainant nor authorized by it in any way to use the MARLBORO trademark to register the Domain Name.
In the circumstances where the Complainant possesses exclusive rights to the MARLBORO trademark while the Respondent seems to have no trademark rights, the Panel is satisfied that the Complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, and the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. In fact, the Respondent is pointing the Domain Name to an online site appearing to offer for sale crystal products, which the Panel views is capitalizing on the public recognition of the MARLBORO trademark and thus not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel finds it inconceivable that the Respondent had no actual notice of the Complainant's trademark rights at the time of registering the Domain Name, given the worldwide fame of the Complainant's MARLBORO trademark. The Panel is convinced that the Respondent was well aware of the MARLBORO trademark but still registered the Domain Name with the intention to create mis-association with the Complainant and its MARLBORO trademark, and this is evidence of bad faith registration.
The Respondent was once pointing the Domain Name to an online site appearing to offer to sell crystal products. Again, due to the reputation of the Complainant's trademark, the Panel holds that, by doing so, the Respondent is trading on the reputation of the Complainant's MARLBORO trademark for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or the goods sold on or through the Respondent's website as described under paragraph 4(b)(iv) of the Policy.
The Panel holds that the Respondent registered and is using the Domain Name in bad faith.
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, <covboymarlboro.biz>, be transferred to the Complainant.
Date: July 7, 2017