WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Zhang Xiao
Case No. D2017-1156
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Zhang Xiao of Chengdu, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain name <marlboro.sale> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 June 15, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and provided an amended Complaint on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. On June 30, 2017 and July 4, 2017, a third party submitted two emails to the Center, indicating that it is not related to the Respondent and requested not to be copied in further email communications. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of panel appointment process on July 13, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on July 18, 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 under the MARLBORO trademark. The MARLBORO trademark and variations thereof have been used in connection with these smoking-related products for many decades.
The Complainant is owner of numerous trademark registrations on the principal register of the United States Patent and Trademark Office including:
April 14, 1908
Tobacco Products, Namely, Snus
January 8, 2008
April 29, 2008
The Respondent registered the disputed domain name <marlboro.sale> on May 13, 2017. The disputed domain name is used by the Respondent to redirect Internet users to a different website each time they attempt to visit the disputed domain name. It redirects users to sites such as a pay-per-click website and a site which attempts to automatically install an Adobe update.
The disputed domain name is offered for sale for USD 1,999.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name, which contains the Complainant’s MARLBORO trademark in its entirety, is identical or confusingly similar to the registered trademark MARLBORO.
No rights or legitimate interests
The Complainant submits that the Respondent has no connection or affiliation with the Complainant in any way, and has not been given permission by the Complainant to use its trademarks in any form. The Respondent is not commonly known by the disputed domain name. The Complainant also alleges that the Respondent has not made a bona fide offering of goods or services on the disputed domain name and therefore shows no rights or legitimate interests in the disputed domain name. Furthermore, the Complainant submits that the disputed domain name is being offered for sale in an amount exceeding the out of pocket expenses of the Respondent, demonstrating a lack of rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant contends that the MARLBORO trademark is well known, and that by registering this disputed domain name the Respondent demonstrated knowledge of the Complainant’s brand and business. Furthermore, it is highly likely that the Respondent knew of the existence of the Complainant’s trademarks prior to registering the disputed domain name. The Complainant alleges that the Respondent’s use of its trademarks was to intentionally attract Internet users for commercial gain and to cause confusion as to an affiliation with the Complainant, which evidences use in bad faith. The Complainant submits that the Respondent is offering to sell the disputed domain name and that such an action constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be in English on the grounds that the website found at the disputed domain name is in English, and the Respondent has been a named party in prior UDRP cases conducted in English. The Complainant also argues that the Complainant is unfamiliar with the Chinese language, and that translation would delay the proceeding and place the Complainant at a disadvantage.
The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark MARLBORO and the generic Top-Level Domain (“gTLD”) “.sale”. Other than the gTLD it is identical to the Complainant’s registered trademark. The addition of the gTLD “.sale” does not stop the disputed domain name being identical to the Complainant’s trademark.
The Panel notes that the Complainant does not rely on any registered trademarks for MARLBORO in China where the Respondent is located. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered, and is being used in bad faith.
As discussed under Section 4 above, the disputed domain name is used to redirect Internet users to a different website each time they attempt to visit the disputed domain name (pay-per-click website for example).
It is also highly likely that the Respondent knew of the Complainant prior to its registration of the disputed domain name. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Furthermore, the fact that the Respondent is offering to sell the disputed domain name constitutes bad faith under paragraph 4(b)(i) of the Policy.
The third part of paragraph 4(a) of the policy is therefore satisfied.
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 <marlboro.sale> be transferred to the Complainant.
Date: July 31, 2017