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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Black Jezuz

Case No. D2018-1727

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 WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Black Jezuz of Los Angeles, California, United States.

2. The Domain Name and Registrar

The disputed domain name <bensonandhedges-ciga.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 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 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 August 6, 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 August 9, 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 August 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2018.

The Center appointed William F. Hamilton as the sole panelist in this matter on September 21, 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 numerous United States Patent and Trademark Office registrations of the BENSON & HEDGES mark (collectively, the “Mark”). The first registration dates back to 1947 (United States trademark registration no. 428,435, registered on March 25, 1947). The Complainant has actively and continuously marketed its cigarette products under the Mark. The Mark has been used in connection with tobacco products since 1883.

The disputed domain name was registered on April 8, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its Mark because the disputed domain name, but for a hyphen, is composed of the Mark, albeit with the word “and” replacing the “&”, plus the suffix “-ciga”. The Complainant asserts the term “ciga” is an obvious reference to cigarettes. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name or the Mark because the Complainant has not licensed the Mark to the Respondent and the Respondent has no bona fide business known by the Mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was intentionally registered and used by the Respondent to attract unsuspecting Internet users to the Respondent’s website which offers a series of click-through links to websites featuring cigarettes and tobacco related products.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name incorporates the Mark in its entirety only replacing the “&” in the Mark with the word “and”. The disputed domain name is ultimately composed of this slightly altered Mark and the suffix “-ciga”. An additional term that closely relates to a complainant’s business, such as the term “ciga” in this case, does not prevent confusingly similarity between the trademark and the disputed domain name. Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.). Nor does the use of a hyphen negate the confusing similarity. Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (the use or absence of punctuation marks, such as hyphens, do not avoid a finding of confusing similarity).

The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing any license or authorization to the Respondent to use the Mark or the disputed domain name. Moreover, the Respondent has failed to provide any evidence that the Respondent has been known by the Mark or any of its components while conducting legitimate business activities. World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642.

The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and used in bad faith. It is inconceivable that the Respondent would innocently seize upon the exact words composing the Complainant’s Mark, change the “&” in the Mark to the word “and” and then add word “ciga” (a term that closely relates to the Complainant’s business) all without knowledge of the Complainant’s Mark. The Respondent’s deception is highlighted by the simple fact that the Respondent’s website provides click-through links for cigarettes. The Respondent has clearly attempted to confuse and divert Internet customers to its own website for commercial gain and profit. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (only feasible explanation for registration of the domain name is intention to cause confusion, mistake and deception).

The Complainant has met its burden of proof under paragraph 4(a)(iii) 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 name <bensonandhedges-ciga.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: September 24, 2018

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