WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited
Case No. D2017-2395
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 Compsys Domain / Compsys Domain Solutions Private Limited of Mumbai, Maharashtra, India.
2. The Domain Names and Registrar
The disputed domain names <marlboroblck.com> and <marlbroroblack.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2015. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 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 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2018.
The Center appointed William Lobelson as the sole panelist in this matter on January 18, 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
The Complainant owns numerous well-known MARLBORO trademark registrations, and in particular:
- US trademark MARLBORO No. 68 502, registered on April 4, 1908 that covers cigarettes;
- US trademark MARLBORO No. 3 365 560, registered on January 8, 2008 that covers Tobacco products, namely, snus;
- US trademark MARLBORO No. 3 419 647, registered on April 29, 1908 that covers Tobacco products, namely, smokeless tobacco;
The Complainant also owns the domain names <marlboro.net> registered on August 15, 1998 and <marlboro.com> registered on March 6, 2000.
The disputed domain names are <marlboroblck.com> and <marlbroroblack.com> and were both registered on October 27, 2017 by the Respondent. The disputed domain names resolve to parking pages displaying commercial links including those of the Complainant's competitors.
After receiving the present Complaint's notification, the Respondent sent an email to the Complainant indicating that he was willing to settle the dispute and sold each domain names for USD 125. The Complainant declined the offer, stating that each domain name has cost USD 35 and that if the domain names were not transferred immediately, it will pursue the case further. No response was obtained from the Respondent after that.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or at least confusingly similar to its earlier trademarks and domain names formed with the trademark MARLBORO; that the Respondent doesn't have any rights or legitimate interests therein; finally, that the Respondent registered and uses the disputed domain names in bad faith for it could not ignore the Complainant's rights.
The Respondent did not reply to the Complainant's contentions in accordance with the Rules, paragraphs 2 and 4.
However, the Panel observes that the Respondent communicated with the Complainant's representative on December 19, 2017, after receiving the notification of Complaint, and decides that the said email communication between the two parties sheds light on the facts of the present Complaint and should be regarded as relevant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns numerous trademark and domain name registrations, in particular within the United States, for the trademark MARLBORO, the reputation of which has already been acknowledged in previous UDRP panels' decisions (See, 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 Int'l Ltd., WIPO Case No. D2009-1263 (; and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614).
The trademark MARLBORO is entirely reproduced within one the disputed domain name <marlboroblck.com>, and it is associated with the word "blck" which is an unquestionably misspelling of the common name "black".
The second domain name <marlbroroblack.com>, for its part, is composed of an obvious misspelling of the trademark MARLBORO, in which a "r" has been added, and the common term "black".
These are blatant examples of typosquatting where a domain name attracts Internet users who make a small typing error, e.g., forgetting a letter or adding one.
The disputed domain names are not therefore identical to the Complainant trademarks, but clearly appear confusingly similar thereto.
Furthermore, the term "black" happens to be used by the Complainant to identify one of its widely known range of products named "Marlboro Black". Thus, the addition of the descriptive name "black" does not deprive the MARLBORO trademark, even if it is misspelled, of its distinctiveness and individuality, but furthermore enhances the risk of association in the public's mind between the Complainant and the contested domain names.
Besides, the Top-Level Domain ".com" should typically be ignored when assessing confusing similarity as established by prior UDRP decisions (See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429).
The Panel concludes that the disputed domain names are confusingly similar to the Complainant's mark and finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Complainant states that the Respondent is not sponsored by or affiliated with it; that it had not authorized the Respondent to register and use the disputed domain names; and that the Respondent has not been known and has not run any bona fide business under the name MARLBORO BLCK or MARLBRORO BLACK.
It is a consensus view of WIPO UDRP panelists (see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") – and cases cited therein) that the overall burden of proof under paragraph 4(c) of the Policy rests with the Complainant, which is required to establish that the Respondent prima facie lacks any rights to, or legitimate interests in, the disputed domain name, and that if the Respondent fails to answer such case, the Complainant is deemed to have satisfied its burden of production (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Respondent has not denied any of the Complainant's assertions and has not brought any element showing that it has a right or legitimate interest in the disputed domain names.
The absence of legitimate interests is even more comforted by the fact that the Respondent, after receiving the Complaint notification, sent an email to the Complainant and did neither contest any of the allegations contained in the Complaint nor attempted to justify the registration of the disputed domain names.
Besides, the Panel observes that the disputed domain names resolve to parking pages that redirect Internet users to third-party websites, some of which directly compete with the Complainant's business. It is obvious in the Panel's mind that the Respondent receives pay-per-click fees from those linked websites. However, this cannot be regarded as a bona fide offer of goods or services.
The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with the provisions of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1) Registration in bad faith
The Complainant contends and provides evidence that its trademark MARLBORO benefits from a worldwide notoriousness.
In this case, it makes no doubt in the Panel's mind that the Respondent was aware of the Complainant's trademarks when it sought to register the disputed domain names.
The Respondent has registered domain names composed of the trademark owned by the Complainant's trademarks and the word "black", which were alternately misspelled, whilst the Complainant uses the term "black" to define one of its range of products. Obviously, the Respondent's goal was to create confusion in the Internet users' minds.
It is well-settled that the practice of typo squatting constitutes an evidence of the bad faith registration of a domain name. See, Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (Finding typo squatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039 ("Typo squatting has been held under the Policy to be evidence of bad faith registration of a domain name"); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 ("[typo squatting] is presumptive of registration in bad faith").
Moreover, the Complainant has established that the Respondent appears as a "serial cybersquatter" which has been implicated in four other UDRP decisions issued during the year 2009, for the same conduct of typo-squatting or cybersquatting.
The documents supplied by the Complainant in support of the present Complaint (Annex 7 to the Complaint) reveal besides that the Respondent had registered thousands of domain names including third party trademarks, which reveals a pattern of conduct reflecting a speculative approach to domain names.
The fact that the Respondent has an extensive history of typo squatting does strengthen the inference of bad faith; See MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034 (finding bad faith where Respondent was a "serial" typo squatter).
2) Use in bad faith
The Complainant establishes that the Respondent has used the disputed domain names in relation with parking pages (Annex 3 to the Complaint) undoubtedly in order to mislead Internet users who think they are visiting one of the Complainant's website, and receive pay-per-click fees from the linked websites establish it.
Thereby, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the notorious Complainant's trademarks.
The Panel also observes that when the Respondent became aware of the Complainant's claims, namely upon being served with the Complaint, it liaised with the Complainant's representative with an e-mail message dated December 19, 2017, to offer a settlement in the form of a grant back of the domain names, in counterpart for financial compensation.
The fact that the Respondent offered to settle the dispute and did not present any arguments in defense can be regarded as an acknowledgment of its alleged wrongdoings.
The Complainant's representative replied to the Respondent on December 21, 2017, indicating that it would not accept to pay for the domain names, which were offered at a price that exceeded the price at which they had initially been purchased, and reiterated its request to have the domain names transferred to the Complainant under no conditions.
The Respondent did not comply.
Consequently, the Panel finds that the above sufficiently constitutes a registration and use in bad faith pursuant to 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 names <marlboroblck.com> and <marlbroroblack.com> be transferred to the Complainant.
Date: January 30, 2018