WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANA
Case No. D2018-1138
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 Contact Privacy Inc. Customer 1242276235 of Toronto, Canada / NICHAPHA PRADABRATTANA of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <marlboro-company.business> (the "disputed domain name") is registered with Google Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 30, 2018 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 June 1, 2018.
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 June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 26, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on June 28, 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 a leading manufacturer of cigarettes in the United States. The Complainant's Marlboro brand was first introduced in the 1920's and has become one of the nation's best-selling cigarette brand for men and women.
The Complainant holds numerous registrations of the MARLBORO trade mark. The earliest, which dates back a hundred years, is the United States Registration No. 68,502, registered on April 14, 1908, in International Class 34. The Complainant also owns United States Registration No. 3,365,560, registered on January 8, 2008, in International Class 34, and United States Registration No. 3,419,647 registered on April 29, 2008, in International Class 34.
The worldwide fame of the MARLBORO trade mark has been previously recognized by numerous UDRP panels.
The Complainant is the registrant of various domain names, including <marlboro.com>, registered on March 6, 2000, and <marlboro.net>, registered on August 15, 1998.
The disputed domain name was registered by the Respondent on February 14, 2018. The disputed domain name currently does not resolve to any website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant submitted extracts of the MARLBORO trade mark registrations from the official public records of the United States Patent and Trade mark Office. The registrations cover cigarettes and tobacco products.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the MARLBORO trade mark.
By comparing the disputed domain name and the MARLBORO trade mark, the Panel notes that the disputed domain name incorporates the Complainant's MARLBORO trade mark in full and deviates only by the addition of "company" which is conjoined by a hyphen. The English word "company" is commonly defined as "a commercial business", "a group of persons" or "the condition of being with others". In this context, Panel finds that the dictionary word "company" does not alleviate the confusing similarity between the Complainant's trade mark and the disputed domain name.
It is accepted that the addition of ".business", a generic Top-Level Domain ("gTLD"), is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's MARLBORO trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant. The Complainant further contends that it is not aware of the Respondent being "commonly known" by the disputed domain name. The disputed domain name does not resolve to a functioning website. Thus, the Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent is an individual from Thailand. There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The disputed domain name does not direct Internet users to any website nor does any evidence of intended fair use exist. Moreover, as no response was filed by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the absence of any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has marketed and sold goods using the MARLBORO trade mark since 1883. Since then, this name has been and continues to be widely used and extensively registered as a trade mark around the world. The disputed domain name was registered well after the use and registration of the Complainant's MARLBORO trade mark.
Where the Complainant's mark is so widely known that a respondent cannot credibly claim to have been unaware of the mark, previous UDRP panels have been prepared to hold that the domain name was registered in bad faith. See LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByProxy.com / DBA David Inc., WIPO Case No. D2011-1839.
In the present case, the worldwide fame of the Complainant's MARLBORO trade mark is indisputable. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of the MARLBORO trade mark, and its business activities. It is inconceivable that the Respondent did not have actual knowledge of the Complainant or its trade mark rights.
The disputed domain name currently resolves to an inactive website. The "passive holding" of a domain name does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent has failed to respond to the Complaint. There is no evidence of any actual or contemplated bona fide use by the Respondent of the disputed domain name. Rather, the Respondent has selected a term identical to the Complainant's famous MARLBORO trade mark conjoined with "company" by a hyphen. Adding the gTLD ".business" further suggests that the disputed domain name is associated with a company trading under the MARLBORO trade mark. Such use signals a possible intent to confuse Internet users into believing that the disputed domain name relates to the Complainant, its business or products.
The Respondent has failed to respond to the Complainant. Further, the Respondent has taken active steps to hide its identity using a proxy service.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, by continuing to hold the disputed domain name, the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 name <marlboro-company.business> be transferred to the Complainant.
Date: July 12, 2018