WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Leonard Gabriel Jr

Case No. D2019-0230

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 Leonard Gabriel Jr of Damascus, Oregon, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <marlborocbdproducts.com> and <marlborohempproducts.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 30, 2019, 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 February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Response was filed with the Center on February 24, 2019.

The Center appointed Evan D. Brown as the sole panelist in this matter on March 5, 2019. 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 owns the well-known MARLBORO trademark that is used on tobacco products. It owns a number of trademark registrations for MARLBORO, including United States trademark registration No. 68,502, registered on April 14, 1908.

The Respondent registered the disputed domain names on December 16, 2018. As of the time of the filing of the Complaint, the disputed domain names resolved to inactive websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent argues principally that he should be entitled to retain ownership of the disputed domain names because when he bought them they were “available and belonged to no one” and at the time, CBD (presumably referring to cannabidiol, a chemical compound in marijuana) was prohibited by federal law. Nonetheless, the Respondent expressed a willingness to sell the disputed domain names “at a fair market price,” which he indicated could be anywhere between $600 and $10,000.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

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

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

All three of these elements have been met in this case.

A. Identical or Confusingly Similar

The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark MARLBORO in its entirety. The addition of the Top-Level Domain “.com” to the disputed domain names does not avoid confusing similarity.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark MARLBORO as noted above.

Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights and has prevailed on this first element of the Policy.

B. Rights or Legitimate Interests

The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that the Respondent is not commonly known by the words comprising the disputed domain names, and the Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services (i.e., using the disputed domain names to redirect Internet users to websites that resolve to blank pages that lack content). These assertions establish the Complainant’s prima facie case. The Respondent’s assertions have not addressed these matters raised by the Complainant, and, seeing no other basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element.

C. Registered and Used in Bad Faith

Because the Complainant’s MARLBORO trademark is well-known, it is implausible to believe that the Respondent was not aware of that trademark when it registered the disputed domain names. The Panel notes that the disputed domain names consist of the trademark MARLBORO in its entirety, along with the descriptive word “products” in both of the disputed domain names, and the terms or words “CBD” and “hemp” in each disputed domain name, respectively. It requires but a small analytical step to make the connection between CBD or hemp and smoking, which is the consumer activity performed with the Complainant’s MARLBORO products. Moreover, the Respondent admits he is in the cannabis business. Accordingly, in the circumstances of this case, these facts are sufficient to establish bad faith registration of the disputed domain names.

Bad faith use is clear from the Respondent’s activities of offering the disputed domain names for sale to the Complainant in an amount surpassing any out-of-pocket costs and passively holding the disputed domain names and not using them for any active websites. That the disputed domain names are currently inactive does not prevent a finding of bad faith. Playboy Enterprises International, Inc. v. Registration Private, Domain Protection Services Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2018-1456. Given (i) the degree of distinctiveness and reputation of the Complainant’s mark, (ii) the failure of the Respondent to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain names may be put, the Panel finds bad faith use. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3. For these reasons, the Panel finds that the Complainant has successfully met this third Policy element.

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 <marlborocbdproducts.com> and <marlborohempproducts.com> be transferred to the Complainant.

Evan D. Brown
Sole Panelist
Date: March 21, 2019