WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Ingrid Ruiz
Case No. D2017-1977
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Ingrid Ruiz of Bogota, Colombia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <iquosmarlborobogota.com> 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 October 10, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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 October 13, 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 October 16, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter referred to as 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 October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. The Center received an informal email communication from the Respondent in reply to the Center's Notification of Respondent Default on November 7, 2017, conveying its willingness to transfer the disputed domain name to the Complainant. The Complainant filed a suspension request with the Center and the proceeding was suspended on November 10, 2017. On November 30, 2017, the Complainant requested the Center to reinstitute the proceeding due to the Respondent's inaction to the settlement process. On December 1, 2017, the Center notified the Parties that it would proceed to Panel Appointment. The Respondent did not submit any further response.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on December 7, 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 the owner of numerous registrations over the marks MARLBORO, including United States Trademark Registration No. 68502, registered on April 14, 1908, and uses the MARLBORO trademark in connection with several variations of cigarettes.
The Respondent registered the disputed domain name <iquosmarlborobogota.com> on July 8, 2017. The disputed domain name resolves to a website without any substantive content.
5. Parties' Contentions
The Complainant contends that the disputed domain name <iquosmarlborobogota.com> is confusingly similar to its registered MARLBORO marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <iquosmarlborobogota.com>.
The Complainant contends that the disputed domain name <iquosmarlborobogota.com> was registered and is being used in bad faith.
The Complainant requests that the disputed domain name <iquosmarlborobogota.com> be transferred to it.
The Respondent had conveyed its willingness to transfer the disputed domain name to the Complainant in an email communication, but the Respondent did not respond to the Complainant in the settlement process. After the Center reinstituted the proceeding, the Respondent did not submit any further substantive response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark or service mark right and the identity or confusing similarity between the disputed domain name and its respective trademark or service mark.
The Panel examines the registration records submitted by the Complainant and finds that the Complainant had registered the marks MARLBORO in the United States.
The Complainant contends that the disputed domain name <iquosmarlborobogota.com> consists of the three parts, i.e., "iquos", "marlboro" and "bogota", before the generic Top-Level Domain ("gTLD") suffix ".com". The Respondent does not respond to such contention.
The Panel finds that the middle part of the disputed domain name "marlboro" is identical with the Complainant's registered marks and the last part "bogota" is the geographical name of the capital city of Colombia. With respect to the first part of the disputed domain name, "iquos", although its meaning or usage is unknown in English, Spanish or other languages, it has hardly any distinctiveness merely as a five-letter composition.
Given that the Complainant's mark MARLBORO is incorporated in the disputed domain name in its entirety and neither the prefix nor suffix attached to the mark can create distinctiveness, the Panel finds the disputed domain name <iquosmarlborobogota.com>, as a whole, is confusingly similar with the Complainant's registered mark MARLBORO. Accordingly, the Complainant has proven the element required by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts, and provides evidence to demonstrate, that the Respondent is not sponsored by or affiliated with the Complainant in any way; nor is the Respondent permitted to use the Complainant's trademarks in any manner, including in the disputed domain name <iquosmarlborobogota.com>. On the other hand, the Respondent does not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name <iquosmarlborobogota.com>.
Paragraph 4(c) of the Policy lists a number of circumstances which can demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy can be applied here. In fact, the Respondent's communication seems to concedes that it has no rights or legitimate interests in the disputed domain name.
Since there is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name <iquosmarlborobogota.com>, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name <iquosmarlborobogota.com> in bad faith. The Respondent does not rebut the Complainant's contentions.
According to the evidence provided by the Complainant, the disputed domain name resolves to a website "www.iquosmarlborobogota.com", on which there are merely two lines of words, i.e., "website coming soon" and "please check back soon to see if the site is available".
The Panel notes that the Complainant sufficiently proves that the mark MARLBORO has become highly recognized in the market through its long-time use and promotion. The Panel finds that the Respondent's use of the disputed domain name that is confusingly similar with the Complainant's mark MARLBORO on a webpage without any substantive content is likely to confuse and attract the Internet users who attempt to access online the information of the Complainant's marks or goods. As noted by previous UDRP panels, non-use of a domain name (including a "coming soon" parking page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), Section 3.3. Since there is no proof that the Respondent has any rights or legitimate interests in the disputed domain name, the Panel finds that it is reasonable to conclude that the Respondent intentionally copies or imitates the Complainant's marks MARLBORO in the disputed domain name (even though the geographic name "bogota" and the five-letter composition "iquos" are attached to "marlboro"), and cannot conceive of any use of the disputed domain name that could be made by the Respondent that would not have the effect of interfering with the Complainant's trademark rights.
The Panel, therefore, finds that the Respondent's registration and use of the disputed domain name are in bad faith and the Complainant has successfully proven 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 disputed domain name <iquosmarlborobogota.com> be transferred to the Complainant.
Date: December 15, 2017