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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp.

Case No. D2017-2373

1. The Parties

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

The Respondent is Domain Admin, Whois Privacy Corp., of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <marlboro-br.com> is registered with Internet Domain Service BS Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 30, 2017. On December 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2018.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 29, 2018. 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

It results from the Complainant's undisputed allegations that it commercializes cigarettes and first started marketing and selling its goods using the MARLBORO trademark in 1883. In addition, the evidence before the Panel shows that the Complainant is the registered owner of several trademarks within the United States consisting of the term MARLBORO, i.e.:

(1) US trademark registration No. 68,502 registered on April 14, 1908, for cigarettes;

(2) US trademark registration No. 3,365,560 registered on January 8, 2008, for tobacco products, namely, snus in class 34; and

(3) US trademark registration No. 3,419,647 registered on April 29, 2008, for tobacco products, namely, smokeless tobacco in class 34.

In addition, the Complainant owns a number of domain names containing the term MARLBORO, such as <marlboro.com> and <marlboro.net>.

It results from the WhoIs extract provided by the Complainant that the Disputed Domain Name's creation date is September 27, 2017.

The Disputed Domain Name does not resolve to an active website but to a blank page that lacks any content.

5. Parties' Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to the MARLBORO trademarks in which the Complainant has rights because it entirely comprises said trademark which is clearly recognizable within the Disputed Domain Name. Merely adding the term "br" and a hyphen is not sufficient to overcome a finding of confusing similarity.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain name. The Respondent is not commonly known by the Disputed Domain Name. Finally, the Respondent has failed to make use of this Disputed Domain Name's website and has not demonstrated any attempt to make legitimate use of the domain name and website.

Finally, the Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant submits that registration of a domain name including a well-known trademark points to bad faith, and that the lack of an active website at a Disputed Domain Name does not prevent a finding of bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "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".

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will, therefore, proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademarks for the term MARLBORO. These trademark registrations predate the creation date of the Disputed Domain Name, which is September 27, 2017.

The Disputed Domain Name includes the trademarks MARLBORO in its entirety and merely combines it with the two letters "br" and a hyphen. These added signs are not sufficient to overcome a finding of confusing similarity between the Disputed Domain Name and the Complainant's MARLBORO trademarks. The Panel has no doubt that a side-by-side comparison of the Disputed Domain Name and the relevant trademarks shows that the latter are clearly recognizable without any further ado within the Disputed Domain Name.

In the light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the Disputed Domain Name. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Indeed, it results from the evidence provided by the Complainant that the Disputed Domain Name is currently not connected to any the website. Such (lack of) use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, SNCF Mobilités v. Private Registration / Domain Admin, WIPO Case No. D2016-1965; Sanofi v. kiyuni, WIPO Case No. D2016-1190; Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack , WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG , WIPO Case No. D2015-1320).

Furthermore, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the Disputed Domain Name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the Disputed Domain Name's registration and use in bad faith.

First it is to be noted that the non-use of a Disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition - "WIPO Overview 3.0").

Furthermore, the Complainant has to the Panel's satisfaction proved a worldwide reputation of its MARLBORO trademark that has been used since the end of the 19th century. In addition, the Panel notes that the Complainant's mark MARLBORO has been deemed famous and enjoying a world-wide reputation worldwide by previous UDRP panels (cf., Philip Morris USA Inc. v. ICS Inc., WIPO Case No.D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org/Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614). This Panel joins the view of these previous panels. In the light of this reputation, it is the view of this Panel that the Respondent should have known that the Disputed Domain Name interferes with the Complainant's MARLBORO trademark when it registered the Disputed Domain Name (cf., Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org , WIPO Case No. D2013-2098).

Considering the high similarity between the trademarks MARLBORO and the Disputed Domain Name as well as the Respondent's awareness of said trademarks, the Panel finds that the Respondent registered and is using the Disputed Domain Name for bad-faith purposes. This finding is supported by some of the other circumstances resulting from the case at hand which are (i) the high degree of distinctiveness and the worldwide reputation of the Complainant's mark, (ii) the Respondent's failure to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the implausibility of any good faith use to which the domain name may be put and (iv) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0.).

In the light of the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 name <marlboro-br.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: February 12, 2018

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