WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2017-2452
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 Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <marlboro-cig.com>, <marlboro-claim.com>, <marlboro-event.com>, <marlboro-flame.com>, <marlboro-pick.com>, <marlboro-product.com>, <marlboro-today.com>, <Marlboro‑week.com> and <marlboro-2017.com> are 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 December 12, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2018.
The Center appointed Peter Burgstaller as the sole panelist in this matter on January 12, 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 the well-known and famous trademark MARLBORO, for which it has various registrations in numerous jurisdictions internationally, including registration number 68,502 with the registration date of April 14, 1908 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) in respect of cigarettes. Additionally it is the registrant of the domain name <marlboro.com> which it uses in connection with a website at “www.marlboro.com”.
Several UDRP panels previously have already accepted that the MARLBORO trademark is famous throughout the world, e.g. Philip Morris USA Inc. v. Michele Dinoia, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306.
The Respondent registered the disputed domain names between October 13, 2017 and October 16, 2017 without having permission to use the Complainant’s trademarks in any manner, including in domain names.
The disputed domain names currently resolve to inactive sites and are not being actively used.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its MARLBORO registered trademarks; the Trademark MARLBORO was first registered in 1908 with the USPTO and the Complainant’s first use in commerce of this trademark dates back to 1883.
The Respondent has no rights or legitimate interests in respect of the disputed domain names, and finally, the Respondent has registered the disputed domain names between October 13, 2017 and October 16, 2017 in bad faith and uses the disputed domain names in bad faith even though they currently resolve to inactive sites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 with respect to 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 disputed domain names are confusingly similar to the Complainant’s trademark MARLBORO since where the relevant trademark is recognizable within the disputed domain names the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
In fact, it is the Panel’s conviction that using the suffixes at issue in connection with the famous mark MARLBORO they rather strengthen the impression that the disputed domain names are in some way connected to the Complainant or at least “free ride” on the reputation of the Complainant’s name and trademark MARLBORO.
It has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark MARLBORO in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
It is the Panels conviction that the fame of the MARLBORO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain names without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith; this conviction is especially supported by the fact that the Respondent also used suffixes to the Complainant’s trademark which are referring to the Complainant’s business (e.g., “cig”, “flame”).
Although the disputed domain names currently resolve to inactive sites and are not being actively used, previous UDRP panels have found that bad faith “use” under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent - inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC, WIPO Case No. D2002-0131).
This Panel also concludes that the present passive holding of the disputed domain names, constitutes a bad faith use, putting emphasis on the following:
- the Complainant’s trademarks are famous worldwide with strong reputation and are well-known globally;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain names;
- the disputed domain names incorporate the Complainant’s trademark MARLBORO, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site);
- no good faith use is possible for the Respondent with regard to the disputed domain names.
Taking all these facts and evidence into consideration this Panel finds that the disputed domain names have been registered and are being used in bad faith under 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, <marlboro-cig.com>, <marlboro-claim.com>, <marlboro-event.com>, <marlboro-flame.com>, <marlboro-pick.com>, <marlboro-product.com>, <marlboro-today.com>, <Marlboro‑week.com> and <marlboro-2017.com> be transferred to the Complainant.
Date: January 27, 2018