WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Pan Shuai Lou
Case No. D2019-0389
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 Pan Shuai Lou of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <marlboroblue.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2019, 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 February 22, 2019 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 February 26, 2019.
The Center sent an email in English and Chinese to the Parties regarding the language of the proceeding on February 22, 2019. The Complainant confirmed its request that English be the language of the proceeding on February 25, 2019. The Respondent did not comment on the language of the proceeding.
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, in both English and Chinese, and the proceedings commenced on February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 4, 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 is the owner of trademark registrations in multiple jurisdictions, including United States trademark registration number 68,502 for MARLBORO in stylized characters, registered on April 14, 1908, in respect of cigarettes, and United States trademark registration number 3,365,560 for MARLBORO in standard characters, registered on January 8, 2008, in respect of tobacco products, namely snus. Those trademark registrations remain current. The Complainant uses its MARLBORO trademark in connection with several variations of MARLBORO brand cigarettes, one of which is known as “Marlboro Blue”. The Complainant has also registered the domain name <marlboro.com> that it uses in connection with a website where it provides information about itself and its products to age-verified adult Internet users.
The Respondent is an individual resident in China. He was also respondent in at least three previous UDRP proceedings in which panels found that he registered and was using other domain names in bad faith. See Klarna AB v. Pan Shuai Lou, WIPO Case No. D2016-2369; Association des Centres Distributeurs E. Leclerc v. Pan Shuai Lou, WIPO Case No. DCO2017-0036; and Carrefour v. Pan Shuai Lou, WIPO Case No. DCO2017-0047. Moreover, according to information provided by the Complainant, the Respondent is currently the registrant of other domain names that incorporate third party trademarks.
The disputed domain name was registered on January 5, 2019. It resolves to a landing page displaying pay-per-click links (“PPC links”) to other websites. Some of the links are labelled “Camel”, “cigarettes” and “cheap cigarettes”.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s MARLBORO trademark. It adds only the generic, descriptive term “blue” and the generic Top-Level Domain (“gTLD”) extension “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by, or affiliated with, the Complainant in any way. In addition, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent is not commonly known by the disputed domain name. The Respondent uses the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business.
The disputed domain name has been registered and is being used in bad faith. By registering a domain name that includes the Complainant’s famous MARLBORO trademark with the mere addition of the term “blue”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of, and familiarity with, the Complainant’s brand and business. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, it must be considered as having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; the disputed domain name is formed of Latin characters; the website to which the disputed domain name resolves features English phrases; and the term “Marlboro” does not have any specific meaning in Chinese.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. Despite having received emails from the Center in Chinese and English regarding the language of the proceeding and the commencement of the proceeding, the Respondent has not indicated any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Complaint in Chinese or English, but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MARLBORO trademark.
The disputed domain name wholly incorporates the MARLBORO trademark. It adds the dictionary word “blue” but a dictionary word does not avoid a finding of confusing similarity with a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
The disputed domain name also adds the gTLD suffix “.com” which, as a technical requirement of registration, may be disregarded in the comparison with a trademark under the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain name is parked at a landing page displaying links to other websites. Some of the links are generated based on the trademark value of the Complainant’s mark. This use does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Moreover, some of the links redirect to websites that offer products of a competitor of the Complainant. Accordingly, the Panel does not find that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use with the terms of paragraph 4(c)(iii) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “Pan Shuai Lou”, not “Marlboro Blue”. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not assert any rights or legitimate interests.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Respondent registered the disputed domain name in 2019, over a century after the Complainant obtained a trademark registration. The Respondent has combined the trademark MARLBORO with the word “Blue”, while “Marlboro Blue” is a variety of the Complainant’s MARLBORO brand. The Panel does not consider this fact to be coincidental. Rather, it gives the Panel reason to believe that the Respondent was aware of the Complainant and its MARLBORO trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The disputed domain name is used to attract Internet users to a landing page displaying PPC links to other websites, where some of the links are based on the trademark value of the Complainant’s mark. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the landing page. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <marlboroblue.com> be transferred to the Complainant.
Date: April 11, 2019