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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Shaula Morris

Case No. D2018-1236

1. The Parties

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

Respondent is Shaula Morris of Fitzgerald, Georgia, United States.

2. The Domain Names and Registrar

The disputed domain names <h2oblastmarlboro.com>, <iceblastmarlboros.com>, <iceblastmarlborough.com>, <icyblastmarlboro.com>, <snowblastmarlboro.com> and <waterblastmarlboro.com> are registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 12, 2018.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 17, 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

Complainant, Philip Morris USA, Inc., is a corporation organized and existing under the laws of the Commonwealth of Virginia. Complainant manufactures, markets and sells cigarettes in the United States. Complainant is the exclusive owner in the United States of federal trademark registrations in and to the MARLBORO mark for cigarettes. Complainant has submitted as Annex 1 to the Complaint copies of its United States federal trademark registrations for the MARLBORO mark, the earliest of which is from April 14, 1908 (Registration No. 68,502). Complainant also owns the domain name <marlboro.com>, which was registered in 2000 and which Complainant uses to provide information about Complainant and its MARLBORO products.

Respondent is an individual based in Fitzgerald, Georgia, United States.

The disputed domain names were registered on February 22, 2018. Currently, the disputed domain names do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

Complainant asserts that its MARLBORO mark is famous in the United States and that it has obtained in the United States federal trademark registrations for the MARLBORO mark for cigarettes. Complainant also asserts that it and its various predecessor entities have used the MARLBORO mark since 1883 and, in particular, for several decades with tobacco and smoking-related products.

Complainant contends that the disputed domain names are confusingly similar to Complainant's MARLBORO mark because each contains the MARLBORO mark, or a phonetic equivalent such as MARLBOROUGH, in its entirety. Complainant further contends that the addition of descriptive terms such as “ice blast,” “icy blast,” “snow blast,” “water blast,” or “h2o blast” at the head of the disputed domain names does not prevent a finding of confusing similarity because Complainant’s MARLBORO mark is clearly recognizable in the disputed domain names. Complainant also notes that the term “ice blast” increases the confusing similarity as the term is closely linked and associated with Complainant’s brand and refers to a flavor of MARLBORO menthol cigarettes manufactured and sold by Complainant.

Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain names because Respondent has no connection or affiliation with Complainant, is not commonly known by any name or trade name that incorporates the MARLBORO mark, and has not received any license or authorization to register the disputed domain names. Complainant further asserts that because Respondent registered the disputed domain names well after Complainant established rights in its well-known MARLBORO trademark, Respondent’s use of the disputed domain names to redirect Internet users to websites that resolve to blank pages suggests a lack of rights and legitimate interests in the disputed domain names.

Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith as Respondent has demonstrated knowledge and familiarity with Complainant’s MARLBORO brand by registering at least one disputed domain name that consists of Complainant's well-known MARLBORO mark with the term “ice blast”, a term that relates to a flavor of MARLBORO menthol cigarettes manufactured by Complainant. Complainant also contends that because the disputed domain names which are based on Complainant’s well-known MARLBORO mark currently resolve to inactive websites, Respondent can only be considered to have registered the disputed domain names not for a good faith purpose but to opportunistically take advantage in bad faith of Complainant’s rights in the MARLORO mark. Lastly, Complainant asserts that Respondent's bad faith is established by the fact that Respondent registered multiple disputed domain names based on the MARLBORO trademark and thus more likely than not knew of and targeted Complainant’s MARLBORO mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns and uses the MARLBORO mark in connection with tobacco related products. Complainant has also provided evidence that the MARLBORO mark has been registered in the United States, where Respondent is located, well before Respondent registered the disputed domain names.

With Complainant’s rights in the MARLBORO mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain such as “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s MARLBORO mark as they incorporate the MARLBORO mark, or a phonetic equivalent, in its entirety in each of the disputed domain names. The addition of descriptive terms such as “ice blast”, “icy blast”, “snow blast”, “water blast”, or “h2o blast” at the head of the disputed domain names does not distinguish the disputed domain names from Complainant’s MARLBORO mark, as the dominant component of the disputed domain names is MARLBORO. See WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s MARLBORO mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

The evidence submitted in this proceeding shows that Complainant adopted and has been using the MARLBORO mark well before Respondent registered the disputed domain names. Given that the disputed domain names consist of the MARLBORO mark, or a phonetic equivalent thereof, with descriptive terms such “ice blast”, “icy blast”, “snow blast”, “water blast”, or “h2o blast” that could be seen by consumers as relating to a type or flavor of MARLBORO cigarette sold by Complainant, it appears more likely than not that Respondent, who has failed to respond or contest this matter, was aware of Complainant’s rights when it registered the disputed domain names. Indeed, Respondent registered at least three disputed domain names, <iceblastmarlboros.com>, <iceblastmarlborough.com> and <icyblastmarlboro.com>, that appear to be based on a flavor of MARLBORO menthol cigarette using the name “Ice Blast” that is manufactured and sold by Complainant. As there is no evidence showing that Respondent has made any bona fide or legitimate use of the disputed domain names, it is likewise likely, on the balance of the probabilities, that Respondent registered the disputed domain names for purposes of exploiting Complainant’s established rights in the MARLBORO mark, and not for some other purpose.

In sum, given that Complainant has established with sufficient evidence that it owns rights in the MARLBORO mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given that the disputed domain names fully include the MARLBORO mark with descriptive terms such as “ice blast”, “icy blast”, “snow blast”, “water blast”, or “h2o blast” that relate to, or could be seen as relating to, a type or flavor of MARLBORO cigarette manufactured and sold by Complainant, it is easy to infer that Respondent was likely aware of Complainant’s rights in the MARLBORO mark when it registered the disputed domain names. Although Respondent has not made any use of the disputed domain names since registering them on February 22, 2018, the totality of the circumstances as shown by the evidence submitted, none of which is contradicted by Respondent, makes clear that Respondent registered the disputed domain names well after Complainant had established rights in the MARLBORO mark, and has, since that time, passively held the disputed domain names in bad faith. First, Complainant has established not only its rights in the MARLBORO name and mark, but also that the MARLBORO name and mark is known and enjoys a longstanding notoriety in connection with cigarette products. Second, Respondent has failed to participate in this proceeding, thereby suggesting that Respondent does not have rights or viable legitimate interests in the disputed domain names. Third, it is questionable whether Respondent’s contact information is valid as set forth in the WhoIs records, inasmuch as the Center was advised by DHL, the courier service used by the Center, that the Written Notice sent to Respondent could not be delivered to Respondent at Respondent’s claimed address where Respondent is allegedly based. Lastly, given the lack of any evidence showing a bona fide use of or good faith basis for registering and using the disputed domain names, it appears unlikely that Respondent had any legitimate purpose for registering and using the disputed domain names either at the time of registration or going forward.

In sum, what the evidence shows here is that Respondent more likely than not knowingly registered and is using the disputed names in bad faith to opportunistically exploit or profit from Complainant’s rights in the Marlboro name and mark. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.

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, <h2oblastmarlboro.com>, <iceblastmarlboros.com>, <iceblastmarlborough.com>, <icyblastmarlboro.com>, <snowblastmarlboro.com>, and <waterblastmarlboro.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: July 28, 2018

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