WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Private Registration / tongliang wang
Case No. D2019-1041
1. The Parties
The Complainant is Philip Morris USA Inc., United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Private Registration, United State of America / tongliang wang, China.
2. The Domain Name and Registrar
The disputed domain name <www-marlboro.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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 May 10, 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 May 10, 2019.
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 May 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 12, 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 a United States of America-based affiliate of Philip Morris International Inc., which is one of the world’s leading international tobacco companies. The Complainant offers a line of tobacco products which are branded MARLBORO. The Complainant owns a portfolio of trademark registrations for MARLBORO (word and device marks) in the United States of America, including United States of America trademark registration number 68502, registered on April 14, 1908 and United States of America trademark registration number 3419647, registered on April 29, 2008. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on March 8, 2019. The Complainant submits evidence that the disputed domain name directed to an active website, which offered lottery and gambling services for commercial purposes. However, on the date of this decision, the disputed domain name directs to an inactive webpage.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for MARLBORO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the consumer and tobacco industry, and provides evidence of a number of prior domain name decisions which recognize that the Complainant and its MARLBORO mark are well known. Moreover, the Complainant provides evidence that the disputed domain name was linked to an active website which offered lottery and online gambling services. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign MARLBORO based on its use and registration of the same as a trademark, incidentally commencing over a century prior to the registration of the disputed domain name.
Moreover, as to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the combination of two elements, which are the Complainant’s MARLBORO trademark and the descriptive addition “www-”. This term is commonly used to refer to the World Wide Web, and is generally placed in front of a domain name to gain access to a website linked to a domain name. The Complainant also submits evidence that it owns the very similar domain name <marlboro.com>, registered on March 6, 2000. In the Panel’s view, the registration of the disputed domain name by the Respondent is a clear case of typosquatting for commercial gain. By registering the disputed domain name as the Complainant’s trademark (and its official domain name), merely preceded by the element “www-“, the Respondent is clearly trying to take unfair advantage of Internet users who make a typing mistake when trying to reach the Complainant’s official website. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.9, “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. (see in this regard also Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119). Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademarks, further confirmed by the prior UDPR decisions adduced by the Complainant, the registration of the disputed domain name which incorporates such trademarks in their entirety with the mere addition of “www-” is clearly intended to mislead and divert consumers to the disputed domain name. By registering the disputed domain name, which only differs from the Complainant’s official domain name by the addition of “www-”, the Respondent intended to take unfair advantage of a typing error by Internet users. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the initial version of the website linked to the disputed domain name offered lottery and online gambling services entirely unrelated to the Marlboro trademarks and products. On the date of this decision however, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark, the high degree of distinctiveness and reputation of the Complainant’s trademark, the initial use of the website linked to the disputed domain name as a website offering entirely unrelated lottery and gambling services, and the Respondent’s apparent intention of typosquatting for commercial gain, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <www-marlboro.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: June 19, 2019