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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Austin Janssen

Case No. D2017-2016

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Austin Janssen of Long Island City, New York, United States.

2. The Domain Names and Registrar

The disputed domain names <cbdmarlboro.com> and <marlborocbd.com> are 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 17, 2017. On October 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 23, 2017.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on December 1, 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

Complainant is a United States tobacco company. Complainant makes Marlboro brand cigarettes, and has several registrations for the MARLBORO mark dating back to at least 1908 (e.g., United States registration no. 68502, registered on April 14, 1908).

Respondent registered the disputed domain names on June 28, 2017. The disputed domain names lead to "parked" web pages that state "website coming soon! Please check back soon to see if the site is available."

5. Parties' Contentions

A. Complainant

Complainant asserts that it has spent substantial time, effort, and money advertising and promoting the MARLBORO marks, has developed substantial goodwill in the MARLBORO marks, and that the MARLBORO marks are famous. Complainant asserts that the disputed domain names are confusingly similar to Complainant's MARLBORO mark, as the disputed domain names consist of the word MARLBORO preceded or followed by "the generic term cbd". Complainant asserts that "the term 'cbd' could be perceived negatively; suggesting that Complainant markets, or intends to market, products containing CBD (cannabidiol – one of the most prevalent chemical compounds in the cannabis plant) under the MARLBORO® trademark." Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not sponsored by or affiliated with Complainant, Complainant has not given Respondent permission to use the MARLBORO mark in the disputed domain names or otherwise, Respondent is not commonly known by the disputed domain names, Respondent has not made any legitimate use of the disputed domain names, and Respondent registered the disputed domain names on June 28, 2017 – well after Complainant registered the MARLBORO mark with the United States Patent and Trademark Office and more than 17 years after Complainant registered <marlboro.com>. Complainant also asserts that Respondent registered and is using the disputed domain names in bad faith, as Respondent began using the disputed domain names more than 100 years after Complainant began marketing and selling MARLBORO brand cigarettes, Respondent's use of the term "cbd", which relates to smoking – in combination with the MARLBORO mark – demonstrates Respondent's familiarity with Complainant's mark, Respondent is diverting users from Complainant's "www.marlboro.com" website and is intending to cause confusion as to the source of the disputed domain names, and Respondent is passively holding the disputed domain names in bad faith and any active use of them could only be in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings "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".

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which Complainant has rights".

Complainant's trademark registrations attached to the Complaint demonstrate that Complainant has rights in the MARLBORO mark.

The disputed domain names consist of the MARLBORO mark, plus the term "cbd", plus the ".com" generic Top-Level Domain ("gTLD"). Generally, "where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." WIPO Overview of Panel View on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Thus, the addition of the term "cbd" and the ".com" gTLD, do not distinguish the disputed domain names from Complainant's mark. See ISO International LLC v. Rob Robinson, WIPO Case No. D2017-1989 ("The additional phrases 'cbd' and 'direct' are common in the cannabis industry and are not distinctive."); Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 ("Although the domain names at issue are not identical to Complainant's marks, a finding of similarity cannot be avoided by adding a common or generic term to Complainant's mark"); WIPO Overview 3.0, section 1.11.1 ("The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test."). Indeed, where, as here, the terms added to the mark relate to Complainant's goods or services, the combination of the terms with the mark contributes to the confusing similarity. Philip Morris USA Inc. v. Shara Gatrelle, The California Cannabis Connect, WIPO Case No. D2017-0470 ("That the terms 'thcextracts', 'cbdextracts', 'cannabiscigarettes', and 'marijuanacigarettes' may be perceived negatively to suggesting that Complainant markets or intends to market marijuana cigarettes under the MALRBORO or PHILIP MORRIS marks, does not negate a finding of confusing similarity. A 'domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to Complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements).' WIPO Overview 2.0, paragraph 1.3."); Philip Morris USA Inc. v. Andrew Soto, WIPO Case No. D2016-0247 ("The Panel agrees with Complainant that adding the descriptive terms 'weedman' and 'kush' to Complainant's trademarks will increase, not decrease, the likelihood of confusion, and will falsely suggest that Complainant markets or intends to market marijuana cigarettes.").

Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has "no rights or legitimate interests in respect of the domain name[s]", paragraph 4(a)(ii) of the Policy.

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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."

Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, or that Respondent has been commonly known by <cbdmarlboro.com> or <marlborocbd.com>. Rather, Complainant asserts that its marks are famous, that Respondent is not sponsored by or affiliated with Complainant, that Respondent is not known by the disputed domain names and that Respondent's WhoIs information "does not resemble the [d]isputed [d]omain [n]ames in any manner", that Complainant has never authorized Respondent to use the MARLBORO mark or the disputed domain names, that Respondent has not made any legitimate use of the disputed domain names, that the disputed domain names instead lead to parked pages "that read 'website coming soon' and lack content", and that Respondent registered the disputed domain names more than 100 years after Complainant began using the MARLBORO mark and more than 17 years after Complainant registered <marlboro.com>.

These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 ("No evidence was presented that at any time had Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.").

Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

"[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

"Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant's trademark would also satisfy Complainant's burden." WIPO Overview 3.0, section 3.1.

Complainant asserts that the following facts support a finding that Respondent registered and is using the disputed domain names in bad faith: Respondent began using the disputed domain names more than 100 years after Complainant began marketing and selling MARLBORO brand cigarettes, Respondent's use of the term "cbd", which relates to smoking – in combination with the MARLBORO mark – demonstrates Respondent's familiarity with Complainant's mark, Respondent is diverting users from Complainant's "www.marlboro.com" website and is intending to cause confusion as to the source of the disputed domain names, and Respondent is passively holding the disputed domain names in bad faith and any active use of them could only be in bad faith. Respondent did not respond to the Complaint and thus has not controverted any of these contentions.

Taken as a whole, these contentions support a finding of bad faith registration and use. Indeed, on very similar facts, at least one UDRP panel previously found that the registration of a domain name combining "cbdextracts" with this Complainant's MARLBORO mark, and the use of the same for a "coming-soon" landing page, constitutes bad faith registration and use. Philip Morris USA Inc. v. Shara Gatrelle, The California Cannabis Connect, WIPO Case No. D2017-0470 ("Evidence that Respondent registered and is using the disputed domain names in bad faith arises from the fame of the MARLBORO and PHILIP MORRIS marks, that Respondent registered four such domain names within a short period of time, and that Respondent's use of the disputed domain names has been limited to 'coming-soon' landing pages. Respondent could not reasonably claim to have been unaware of the rights Complainant holds in the MARLBORO and PHILIP MORRIS marks at the time Respondent registered and began using, or determined to postpone its use of, the disputed domain names. This same conclusion has been reached by UDRP panels deciding cases involving domain names that incorporate the famous MARLBORO mark or PHILIP MORRIS mark in its entirety."). See also, The American Automobile Association, Inc. v. AAA Automotive, WIPO Case No. D2012-0871 ("Respondent's registration of the disputed domain name over 100 years after Complainant's adoption and extensive use of the mark (i.e., at a time when Respondent almost certainly knew of Complainant's trademark rights) … also is evidence of bad faith"); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 ("in registering and holding the disputed domain name, Respondent creates a likelihood of confusion with Complainant's famous trademark and deprives Complainant from offering its products to prospective clients who are clearly looking for it via the disputed domain name. The present lack of active use of the disputed domain name does not help Respondent. Previous UDRP decisions have shown that the mere passive holding of a domain name may be characterized as bad faith in some cases, mainly considering that the disputed domain name reproduces a well-known trademark."); Philip Morris USA Inc. v. Malton Int'l Ltd., WIPO Case No. D2009-1263 ("Complainant has also proved [registration and use in bad faith]. The Panel has come to that view for the following reasons: Respondent was obviously aware of Complainant and its Marlboro cigarettes when it registered the Domain Name. Without any authority from Complainant, Respondent has incorporated Complainant's mark in the Domain Name. Respondent's failure to file any Response in this proceeding is consistent with the Panel's conclusion that the Domain Name was registered, and has been used, in bad faith.").

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and are being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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 names, <cbdmarlboro.com> and <marlborocbd.com>, be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: December 15, 2017

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