WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Administrator, See PrivacyGuardian.org / Rohit Patel, MAC

Case No. D2017-2396

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, USA / Rohit Patel, MAC of Gujarat, India.

2. The Domain Names and Registrar

The disputed domain names <marlboro-au.com>, <marlboro-denmark.com>, <marlboro-pack.com>, <marlboro-packs.com>, <marlboro-primes.com>, <marlboro-pr0mo.com>, <marlboro-se.com> and <marlboro-uk.com> (the “Disputed Domain Name”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2017. 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 disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 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 December 12, 2017.

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 of the Complaint, and the proceedings commenced on December 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2018.

The Center appointed Frank Schoneveld as the sole panelist in this matter on January 11, 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 is the owner of a number of trademark registrations within the United States of the trademark MARLBORO the first of which was registered on April 14, 1908. These include the trademark MARLBORO registered at the United States Patent and Trademark Office (“USPTO”) Registration numbers 68,502 (registered on April 14, 1908), 3,365,560 (registered on January 8, 2008), and 3,419,647 (registered on April 29, 2008).

The Complainant is the registrant of the domain name <marlboro.com> first registered on March 6, 2000. This domain name points to the Complainant’s website, “www.marlboro.com” which enables access to information regarding the Complainant’s Marlboro products including tobacco products, and is used for commercial purposes including special offers for such products. The Complainant is also the registrant of the domain name <marlboro.net> first registered on August 15, 1998.

In view of the evidence provided by the Complainant, the Panel finds as a fact that the Complainant uses its MARLBORO trademarks in connection with several variations of Marlboro brand cigarette products.

The Panel finds that the Disputed Domain Names were registered from August 17, 2017 to August 20, 2017, and resolve to blank pages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that through its widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products. It also contends that the MARLBORO trademarks are famous, citing a number of UDRP panels that have noted or determined that the MARLBORO trademark is “famous world­wide” (Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306), is a “famous trademark” (Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660), is “a well-known trademark worldwide” (Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735), and is of “worldwide renown” (Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263).

The Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1 arguing that “where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” The Complainant contends that when comparing the Disputed Domain Names to the Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and the Complainant’s trademarks, so that the Top-Level Domain (“TLD”), such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademarks.

The Complainant argues that (i) the Disputed Domain Names <marlboro-pack.com>, <marlboro-packs.com>, <marlboro-pr0mo.com>, and <marlboro-primes.com> can be considered as capturing, in their entirety, the Complainant’s MARLBORO trademark and simply adding the generic terms “pack”, “packs”, “pr0mo”, and “primes” to the end of the Complainant’s trademark, and (ii) the Disputed Domain Names <marlboro-denmark.com>, <marlboro-uk.com>, <marlboro-au.com>, and <marlboro-se.com> incorporate the Complainant’s MARLBORO trademark in its entirety while merely adding the geographically descriptive terms “denmark”, “uk” (or United Kingdom of Great Britain and Northern Ireland, (“United kingdom”)), “au” (or Australia), and “se” (or Sweden) to such trademark, thus rendering the Disputed Domain Names confusingly similar to the Complainant’s trademark.

The Complainant submits that the mere addition of these generic and geographical terms to the Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Names and the Complainant’s trademark and that it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity. The Complainant argues that the use of hyphens between the trademark and the generic or geographical indication does not diminish the confusing similarity between the Disputed Domain Names and the Complainant’s trademark and should be disregarded for the purpose of making a determination of confusing similarity.

The Complainant asserts that the granting of registrations by the USPTO to the Complainant for the MARLBORO trademark is prima facie evidence of the validity of the term “marlboro” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the MARLBORO trademark in commerce on or in connection with the goods and/or services specified in such registration certificates.

The Complainant contends that (i) the Respondent is not sponsored by or affiliated with the Complainant in any way, (ii) the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names, and (iii) the Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests in the Disputed Domain Names.

The Complainant argues that the pertinent WhoIs information identifies the Registrant as “Domain Administrator / See PrivacyGuardian.org” which does not resemble the Disputed Domain Names in any manner, and accordingly, there is no evidence, including in the WhoIs record for the Disputed Domain Names, that suggests that Respondent is commonly known by the Disputed Domain Names. The Complainant states that the Respondent cannot be regarded as having acquired rights or legitimate interests in the Disputed Domain Names.

The Complainant points out that the Respondent registered the Disputed Domain Names in August of 2017, which is significantly after the Complainant filed for registration of its MARLBORO trademark with the USPTO, and significantly after the Complainant’s first use in commerce of its trademark in 1883, and also significantly after the Complainant’s registration of its <marlboro.com> domain name on March 6, 2000.

The Complainant states that (i) the Respondent is using the Disputed Domain Names to redirect Internet users to websites that resolve to blank pages and lack content, (ii) the Respondent has failed to make use of the Disputed Domain Names’ websites, and (iii) has not demonstrated any attempt to make legitimate use of the Disputed Domain Names and websites. The Complainant argues that such circumstances all evince a lack of rights or legitimate interests in the Disputed Domain Names as has been confirmed by numerous past UDRP panels (citing, in particular, Pet Plan Ltd v. Marc Castonguay, WIPO Case No. D2015-2116).

The Complainant asserts that by registering domain names that include the Complainant’s famous MARLBORO trademark in its entirety, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business, and in light of the facts, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Names were registered. The Complainant argues that the MARLBORO trademark is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. The Complainant further argues that, where the Disputed Domain Names incorporate generic phrases related to the Complainant’s business in combination with the MARLBORO trademark, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” (citing Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

The Complainant contends that at the time of registration of the Disputed Domain Names, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant also asserts that (a) in addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Disputed Domain Names, the Complainant has marketed and sold goods using the MARLBORO trademark since 1883, which demonstrates the Complainant’s enormous fame, and (b) while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the Disputed Domain Names in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding.

The Complainant considers that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks, and the fact that the Respondent has made no use of the Disputed Domain Names, are factors that should be duly considered in assessing bad faith registration and use. The Complainant notes that the Disputed Domain Names currently resolve to inactive sites and are not being used, and that past UDRP panels have noted that the word bad faith “use” in the context of the Policy paragraph 4(a)(iii) does not require a positive act on the part of the Respondent – instead, the Complainant asserts, that passively holding domain names can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii).

The Complainant argues that the Disputed Domain Names can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Names, and thus, the Disputed Domain Names must be considered as having been registered and used in bad faith pursuant to the Policy paragraph 4(b)(iv), with no good faith use possible. More specifically, the Complainant argues that where the Disputed Domain Names incorporate the Complainant’s famous MARLBORO trademark in its entirety while adding related generic terms and geographically descriptive terms, there is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Names, and “...the only feasible explanation for Respondent’s registration of the disputed domain names is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain names. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant contends that the Respondent has registered numerous domain names that each infringe upon the Complainant’s MARLBORO trademark and the sheer number of infringing domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

The Complainant also contends that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held can support an inference of bad faith registration and use.

The Complainant concludes by stating that on the balance of the facts set forth in the Complaint, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements are present:

(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.

A. Identical or Confusingly Similar

The Complainant has provided compelling evidence showing that it is the holder of the MARLBORO trademark registered with the USPTO, and has rights arising from such registered trademark. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.

It is clear that the Disputed Domain Names <marlboro-pack.com>, <marlboro-packs.com>, <marlboro­pr0mo.com>, and <marlboro-primes.com> include the same word as the Complainant’s MARLBORO trademark and simply add the terms “pack”, “packs”, “pr0mo”, and “primes” to the end of the Complainant’s trademark. It is also clear that the Disputed Domain Names <marlboro-denmark.com>, <marlboro-uk.com>, <marlboro-au.com>, and <marlboro-se.com> include the same word as the Complainant’s MARLBORO trademark and simply add the geographically descriptive terms “denmark” or commonly used abbreviations for the United Kingdom (“uk”), Australia (“au”), and Sweden (“se”). A hyphen (“-”) separates such additional lettering in the Disputed Domain Names.

The dominant feature of all the Disputed Domain Names is the word “marlboro” which is the same spelling as the Complainant’s MARLBORO trademark. The addition of other terms (geographically descriptive and otherwise) separated by a hyphen, do not materially diminish the conclusion that the first impression of an Internet user would be that the Disputed Domain Names are confusingly similar to the Complainant’s MARLBORO trademark because it has relatively minor additions to the Complainant’s MARLBORO trademark. In the Panel’s view the TLD, “.com”, does not in this case affect the Disputed Domain Names for the purpose of determining that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks.

In view of the above, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s MARLBORO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the absence of any contrary evidence or response from the Respondent, the Panel finds that the Complainant has spent substantial time, effort, and money advertising and promoting the Complainant’s MARLBORO trademarks, and that the Complainant has developed substantial goodwill in these trademarks.

The evidence provided by the Complainant indicates that:

(i) the Respondent is not sponsored by or affiliated with the Complainant the holder of the MARLBORO trademark;

(ii) the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner;

(iii) the Respondent is not commonly known by the Disputed Domain Names;

(iv) the relevant WhoIs information identifies the Registrant as “Domain Administrator / See PrivacyGuardian.org / Rohit Patel” which does not resemble the Disputed Domain Names in any manner; and

(v) there is no evidence, including in the WhoIs record for the Disputed Domain Names, that suggests the Respondent is commonly known by the Disputed Domain Names.

The use of the geographic terms “au”, “denmark”, “se” and “uk” in <marlboro-au.com>, <marlboro-denmark.com>, <marlboro-se.com> and <marlboro-uk.com> implies or at least suggests that the Disputed Domain Names have some sort of sponsorship or endorsement by the Complainant with regard to the use of its MARLBORO trademark in those geographic locations. The Complainant denies any such sponsorship or endorsement.

In the four Disputed Domain Names <marlboro-pack.com>, <marlboro-packs.com>, <marlboro-primes.com>, <marlboro-pr0mo.com>, the use of the words “pack”, “packs”, “primes” and “pr0mo” are terms commonly used in commerce and more particularly in the trade and commerce of tobacco and cigarette products. Cigarettes are often sold in a pack or packs and may be advertised or marked as “prime” or “primes” to distinguish a certain quality of cigarette or tobacco. As shown by the evidence provided by the Complainant, it uses promotions or the abbreviation “promo” to sell its Marlboro branded products over the Internet. The use of such words in association with the Complainant’s MARLBORO trademark suggests the Respondent had knowledge of the Complainant’s trademark and field of commerce. There is however, no evidence suggesting that the Respondent has rights or legitimate interests and the Complainant denies any rights or legitimate interests.

The websites to which the Disputed Domain Names devolve provide no assistance as to whether the Respondent might have any right or legitimate interest in the Disputed Domain Names. The Complainant provides a number of examples of similar domain names for sale at “www.sedo.com”, however none of these include the Disputed Domain Names. There is therefore, no clear evidence that the Respondent is attempting to sell or trade in the Disputed Domain Names, at least not at this stage.

The Rules at paragraph 15(a) require that “a Panel 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.” In the absence of any response from the Respondent to the Complainant’s assertions, the Panel therefore proceeds to decide this proceeding on the basis of the Complaint and in accordance the Policy, the Rules and any rules and principles of law that are applicable.

In these proceedings the use of the Complainant’s MARLBORO trademark in the Disputed Domain Names implies or suggests that the Disputed Domain Names have some sort of sponsorship or endorsement by the Complainant. However, the Complainant makes it very clear that it has given no such sponsorship or endorsement, and that any use in commerce would violate the Complainant’s rights in its MARLBORO trademark. At the same time there is no evidence that the Respondent has rights or legitimate interests in the Disputed Domain Names.

In the Panel’s view, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has failed to provide any response to rebut this prima facie case.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

C. Registered and Used in Bad Faith

The Complainant alleges the Disputed Domain Names have been registered and are being used in bad faith and the Respondent has not provided any submission or information to suggest that the Disputed Domain Names have been registered and/or are being used in good faith.

As has been found by previous UDRP panels, the Complainant’s MARLBORO trademark that makes up the dominant part of the Disputed Domain Names, is well known internationally (see, for example, Philip Morris USA Inc. v. ICS Inc.,supra; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, supra; and Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, supra). Because the Complainant’s trademark is well known internationally, in the absence of any submission from the Respondent, it can be concluded that the Respondent knew, or at least should have known, of the existence of the Complainant's well-known trademark, also if the Respondent is in India. With such knowledge, the registration of the Disputed Domain Names containing the Complainant’s well-known trademark as a dominant part of the Disputed Domain Names, is an indicator of bad faith.

The fact that the Respondent has registered eight domain names all of which similarly contain the Complainant’s MARLBORO trademark, and, there being no other available explanation, indicate that the registrations were made with the MARLBORO trademark in mind. The registration, without rights or legitimate interests in the Disputed Domain Names, of such a large number of similar domain names containing the well-known MARLBORO trademark, suggests they are registered and used in bad faith.

The use of the geographic indicators in the Disputed Domain Names of countries where there is no locality named “Marlboro” (as far as the Panel can determine with an Internet search engine), and the use of the commercial terms “promo”, “pack”, “packs” and “primes” commonly used in the cigarette tobacco business, raise a strong suspicion that the Respondent may be seeking to illegitimately trade off the Complainant’s well-known MARLBORO trademark that forms the dominant part of the Disputed Domain Names. This is also an indicator of bad faith.

The use of the Disputed Domain Names would lead Internet users to be mistaken and confused that the Disputed Domain Names are somehow associated with the owners of the MARLBORO trademarks when clearly they are not. This is equally an indication of bad faith registration and use of the Disputed Domain Names.

Further, at the time of initial filing of the Complaint, the Respondent employed a privacy service to hide its identity. While there may be legitimate reasons for using a privacy service, the initial use of a privacy service is not explained by the Respondent.

Despite the indications of bad faith raised by the above factors, the Respondent provides no response to the Complainant’s allegations of registration and use in bad faith. In addition, no indication is provided of a good faith use of the Disputed Domain Names. If there were a good faith registration and use of the Disputed Domain Names, it would be expected that the Respondent would provide some sort of rebuttal of the Complainant’s allegation of bad faith.

The accumulation of the foregoing indicators of bad faith use and registration, together with the unexplained initial use of a privacy service to hide the identity of the Respondent, all lead the Panel to conclude that it is more likely than not that the Disputed Domain Names have been registered and are being used in bad faith.

The Panel therefore finds that the Disputed Domain Names have been registered and are being used in bad faith.

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, <marlboro-au.com>, <marlboro-denmark.com>, <Marlboro-pack.com>, <marlboro-packs.com>, <marlboro-primes.com>, <marlboro-pr0mo.com>, <Marlboro-se.com> and <marlboro-uk.com>, be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: January 29, 2018