WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Matthew Davis
Case No. D2018-1006
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Matthew Davis of Las Vegas, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <marlboroblockchain.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. The Center received informal email communications from Respondent on May 28, 2018 and June 1, 2018. On June 2, 2018, Respondent requested to extend the Response due date. The Center confirmed that the due date for Response was extended to June 7, 2018, in accordance with paragraph 5(b) of the Rules. Respondent did not submit a formal Response. Accordingly, the Center notified the Parties on June 11, 2018, that the Center will proceed to Panel appointment.
The Center appointed Andrew Mansfield as the sole panelist in this matter on June 26, 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
Philip Morris USA Inc. (“Complainant”), is the owner of numerous trademark registrations within the United States. Complainant has provided evidence to the Panel that it owns the rights to numerous marks registered with the USPTO. These registrations are referred to hereafter as the “Complainant’s Trademarks.” The marks relevant to this instant matter are:
1. The trademark MARLBORO, USPTO 68,502, registered on April 14, 1908, in IC Class 34;
2. The trademark MARLBORO, USPTO 3,365,560, registered on January 8, 2008, in IC Class 34; and,
3. The trademark MARLBORO, USPTO 3,419,647, registered on April 29, 2008, in IC Class 34.
Complainant indicates it has registered the domain name <marlboro.com>. This domain name resolves to Complainant’s website, “www.marlboro.com” (the “Complainant’s Website”), which enables access to information regarding Complainant, MARLBORO products, and special offers to age-verified adult smokers 21 years of age or older. In addition, Complainant owns the domain name registration for <marlboro.net>.
5. Parties’ Contentions
Complainant asserts that the Disputed Domain Name is identical or confusingly similar to Complainant’s Trademarks. Complainant indicates it has spent substantial time, effort, and money advertising and promoting Complainant’s Trademarks throughout the United States, and Complainant has thus developed substantial goodwill in those marks. Through such widespread, extensive efforts, Complainant’s Trademarks have become distinctive and are uniquely associated with Complainant and its products.
Complainant asserts that the confusing similarity of Complainant’s Trademarks to the Disputed Domain Name can be determined by the fact that the Disputed Domain Name captures, in its entirety, Complainant’s Trademarks and simply adds “blockchain” to the end of the trademark. This addition to Complainant’s Trademarks does not negate the confusing similarity between the Disputed Domain Name and Complainant’s Trademarks.
Complainant next argues that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name. Complainant primarily relies on the fact that Respondent is not commonly known by the Disputed Domain Name.
Complainant supports this contention by indicating that Respondent is using the Disputed Domain Name to redirect Internet users to a website that resolves to at a blank page and lacks content. Respondent has failed to make use of this Disputed Domain Name and has not demonstrated any attempt to make legitimate use of the Disputed Domain Name, which evinces a lack of rights or legitimate interests in the Disputed Domain Name.
Finally, Complainant asserts that Respondent registered and is using the Disputed Domain Name in bad faith. One fact supporting such a finding, according to Complainant, is that by registration of the Disputed Domain Name that includes any of Complainant’s Trademarks in its entirety in combination with the descriptive term “blockchain”, Respondent has created a domain name that is confusingly similar to Complainant’s trademark. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business.
In addition to the Disputed Domain Name, Complainant states that Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Name.
The Complainant asks the Panel to find, on balance of the facts set forth above, that it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Name in bad faith.
The Respondent did not formally reply to Complainant’s contentions, but in its email of May 28, 2018, requested USD 3,000 for the Disputed Domain Name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
Complainant has shown that it owns a considerable number of trademark registrations in a wide variety of jurisdictions for the word mark MARLBORO. This is beyond dispute and MARLBORO is, perhaps, one of the most famous trademarks that is recognized in the United States and multiple jurisdictions.
As Complainant discusses, a domain name which consists of a trademark and a generic word, such as blockchain, is confusingly similar to the trademark which it incorporates. When the relevant trademark, such as one of Complainant’s Trademarks, is recognizable within the Disputed Domain Name, the addition of a term such as “blockchain” does not prevent a finding of confusing similarity under the first element of the Policy.
Given the above, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark and the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
The Panel does not lightly or automatically find that Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, a complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is deemed to have satisfied the second element of the Policy.
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant indicates Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainant can find, been commonly known by a name identical to or similar to the Disputed Domain Name. Finally, Respondent’s current use of the Disputed Domain Name alleged by Complainant is not a legitimate noncommercial or fair use. Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances is addressed to the respondent. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
For all the below reasons, the Panel concludes that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel agrees that the use of the mark MARLBORO and the incorporation of the word “blockchain” cannot have occurred through happenstance or luck. Given the history of Complainant’s Trademarks and the widespread advertising and marketing of Complainant’s products under the mark, it is impossible to conclude that Respondent was unaware of the mark and the Panel finds that Respondent had constructive, if not actual notice of Complainant’s Trademarks.
The use of the Disputed Domain Name also evidences continued utilization of the Disputed Domain Name in bad faith. The Disputed Domain Name is passively held and it does not resolve to an active website. This supports the conclusion of the Panel that the Disputed Domain Name is being held only as an investment and that Respondent would likely offer to sell the Disputed Domain Name to Complainant or use it to redirect Internet traffic to another product or service. This conclusion is supported by Respondent’s communication offering the Disputed Domain Name for sale in excess of its likely out of pocket costs. Non-use of a domain name does not prevent a finding of bad faith registration and use.
The third element of the Policy has been satisfied.
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 <marlboroblockchain.com> be transferred to the Complainant.
Date: July 30, 2018