WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Michael A. Chismar, III / M.A. Chismar, III

Case No. D2019-1133

1. The Parties

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

Respondent is Michael A. Chismar, III / M.A. Chismar, III, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <buymarlboromarijuanacigarettes.com>, <findmarlboromarijuanacigarettes.com>, <marlboroblunt.com>, <marlboroblunts.com>, <marlborocannabiscigarettestore.com>, <marlborocannabiscigarettestores.com>, <marlborocannabisfarm.com>, <marlborocbdcigarette.com>, <marlborohempcigarette.com>, <marlborohempcompany.com>, <marlborohempfarm.com>, <marlborojoint.com>, <marlborolightblunt.com>, <marlborolightcannabiscigarette.com>, <marlborolightcannabis.com>, <marlborolightcbdcigarette.com>, <marlborolighthempcigarette.com>, <marlborolightjoints.com>, <marlborolightmarijuana.com>, <marlborolightspliff.com>, <marlborolightspliffs.com>, <marlboromancannabis.com>, <marlboromansmokescannabis.com>, <marlboromansmokesjoint.com>, <marlboromarijuanacigarette.com>, <marlboromarijuanacigarettenearme.com>, <marlboromarijuanacigaretteshop.com>, <marlboromarijuanacigarettesnearme.com>, <marlboromarijuanacigarettestore.com>, <marlboromarijuanalight.com>, <marlboromarijuanalights.com>, <marlboromcigarette.com>, <marlborospliff.com>, and <marlborospliffs.com> (the “Domain Names”) 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 May 16, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with all but one of the Domain Names. On May 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for those Domain Names which differed from the named Respondent and contact information in the Complaint. On May 21, 2019, Complainant submitted an amended Complaint adding a new Domain Name to the proceeding. On May 23, 2019, the Registrar transmitted by email to the Center its verification response for the newly added Domain Name, disclosing registrant and contact information which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed a second amended Complaint on June 14, 2019.

The Center verified that the Complaint and amended Complaints 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 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. On July 3, 2019, Respondent requested the automatic four-day response extension pursuant to paragraph 5(b) of the Rules, making the new Response due date July 13, 2019. In response to an email communication received from Respondent on July 4, 2019, the Center sent an email communication that same day to the Parties, inviting them to explore settlement negotiations. The proceeding was then suspended on July 9, 2019. Upon request of Complainant, the proceeding was reinstituted on August 8, 2019. The Response was submitted to the Center on August 12, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on September 2, 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

Complainant is a manufacturer of cigarettes, and has sold its products under the registered trademark MARLBORO for more than a century (see, for example, United States registration no. 68502, registered April 14, 1908). The MARLBORO mark is one of the most famous trademarks in the world. Complainant’s main website is located at “www.marlboro.com”, a domain name Complainant has owned since 2000.

The Domain Names were registered at various dates between April 13 and 28, 2019. The Domain Names resolve to a website under construction.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent disputes Complainant’s asserted entitlement to a transfer of any of the Domain Names. Respondent raises myriad arguments, some of which will not be addressed herein because they are either off-point, duplicative, or frivolous. Respondent typically did not develop his numerous arguments, but usually just raised a topic and then cited to an annex to the Response. (For example, under the rubric of the “rights or legitimate interests” issue, Respondent annexed, without any explication of the relevance to this proceeding of the annex, a bulletin from the United States Internal Revenue Service (“IRS”) discussing the tax treatment of domain name acquisition costs.) Respondent’s arguments relevant to the disposition of this case will be taken up below in the context of the three elements required under the Policy for a transfer of the Domain Names.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark MARLBORO, through longstanding registration and widespread use. The Panel further concludes that the Domain Names are confusingly similar to the MARLBORO mark, because the Domain Names incorporate that mark in its entirety and add various descriptive words before and/or after MARLBORO. Apart from words like “buy” or “find” in two of the Domain Names (which words do nothing to reduce confusing similarity between the MARLBORO mark and these Domain Names), the additional words are various smoking-related nouns (such as “spliff” – a marijuana joint – and “blunts” – a marijuana cigar) or adjectives, which tend to reinforce an association between Complainant and the Domain Names, even if, at this juncture, Complainant is not (to the Panel’s knowledge and based on the evidence of record) in the business of selling cigarettes containing marijuana or related substances.

Further, it is well established under the Policy that, 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”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.8.

Complainant has established Policy paragraph 4(a)(i) for each of the Domain Names.

B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. It is undisputed that Complainant and Respondent have no relationship to each other, and that Complainant has not authorized Respondent to use its MARLBORO mark in any manner.

With respect to the above-quoted, Policy paragraph 4(c)(i), Respondent has presented no evidence that he is using, or has demonstrable plans to use, the Domain Names in connection with a bona fide offering of goods or services. It appears from the Response that Respondent may be arguing that he intends to make some type of commercial use of the Domain Names. This possible motive may be gleaned from the following text in the Response:

“Under Construction – Business, Domain Speculation Start-Up-Medical Cannabis:

Advertising
Buy/Sell
Consulting
Hand-Keying
Investing
Licensing
Marketing
Security”

The foregoing disjointed words do not constitute a coherent business plan (if that is in fact what Respondent intended by this portion of the Response).

Respondent points to a few cities in the United States named Marlboro or Upper Marlboro, noting that marijuana is legal in some of those cities. Respondent does not, however, state or show that he is actually preparing to engage in some commercial activity connected to those cities. Moreover, the Panel finds Respondent’s reference to these cities to be pretextual. There may be cities named Marlboro, but this does not explain why several of the Domain Names contain the terms “Marlboro Lights” (a leading brand of “light” cigarettes made and sold by Complainant) and “Marlboro Man” (one of the most famous advertising icons over the past century, associated solely with Complainant’s MARLBORO mark).

Respondent notes that Complainant does not sell marijuana and that the sale of marijuana in the United States remains illegal under federal law at this time. (Several of the United States have recently legalized marijuana sales and consumption under certain circumstances, and numerous other states are currently considering such measures.) Respondent seems to be arguing that Complainant cannot legally sell marijuana cigarettes within the United States and therefore has no right to the Domain Names. The problem with this argument is that the trademark MARLBORO is included in each of the Domain Names. That mark is famous and is closely associated with smoking. Marijuana is also closely associated with smoking.

While the Panel need not predict whether Complainant would ever enter the market of marijuana cigarettes, and while the Panel is not making any definitive trademark determination, it seems rather obvious that someone who started selling “Marlboro” marijuana cigarettes in the United States would be violating Complainant’s trademark rights. The MARLBORO mark is simply too dominant in the realm of smoking to admit of another possible outcome.

With respect to the above-quoted, Policy paragraph 4(c)(ii), there is no evidence that Respondent is commonly known by the Domain Names.

With respect to the above-quoted, Policy paragraph 4(c)(iii), there is no evidence that Respondent is making, or intends to make, a noncommercial or fair use of the Domain Names “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. On the contrary, as well as the Panel can understand Respondent’s position from his various disjointed arguments, Respondent does intend to make some form of commercial use of the Domain Names. (In this vein, the Panel notes that one of Respondent’s annexes is presented under the topic header “Domain Investing”. Similarly, as noted above, one of Respondent’s inchoate comments in the “rights or legitimate interests” section of his Response was “Under Construction – Business, Domain Speculation Start-Up-Medical Cannabis”).

Complainant has established Policy paragraph 4(a)(ii) for each of the Domain Names.

C. Registered and Used in Bad Faith

With respect to each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and has used the Domain Names in bad faith within the meaning of the Policy. Respondent does not – and credibly cannot – deny knowledge of the famous MARLBORO trademark at the time he registered the Domain Names. The presence in the Domain Name of various smoking-related terms makes it obvious that Respondent has targeted Complainant’s famous MARLBORO mark. Respondent notes that there are American cities called Marlboro, and he apparently claims legitimacy vis-à-vis the Domain Names on that basis, but his targeting of Complainant’s MARLBORO mark is undeniable. The fact that some of the Domain Names include not only MARLBORO but also “man” or “lights” makes this plain. As noted above, the “Marlboro Man” was an advertising icon famous throughout the United States for decades, and Marlboro Lights are among the most popular cigarettes in the United States. In short, it is clear that Respondent registered each of these Domain Names with Complainant’s famous MARLBORO mark in mind.

The Panel also finds Respondent in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(ii). Respondent has registered 33 Domain Names containing the famous MARLBORO mark and adding thereto various words related to smoking (even if not tobacco). That is a pattern of preclusive registration under paragraph 4(b)(ii).

The Panel also finds that Respondent is in bad faith for his “passive holding” of Domain Names confusingly similar to a famous trademark, under the principle first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that seminal case, the panel held that bad faith under the Policy may occur, in appropriate circumstances, where a respondent passively holds a domain name confusingly similar to a famous trademark. The two main factual considerations driving the Telstra decision, which are also present here, are that the trademark in question is well known in the respondent’s country and that the respondent offered no evidence of any legitimate purpose for registering the domain name. The Telstra panel concluded that, in those circumstances (plus some other considerations not present here but not as important), “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.

The Panel concludes that the same result is warranted under the record here.

Complainant has established Policy paragraph 4(a)(iii) for each of the Domain Names.

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 Domain Names <buymarlboromarijuanacigarettes.com>, <findmarlboromarijuanacigarettes.com>, <marlboroblunt.com>, <marlboroblunts.com>, <marlborocannabiscigarettestore.com>, <marlborocannabiscigarettestores.com>, <marlborocannabisfarm.com>, <marlborocbdcigarette.com>, <marlborohempcigarette.com>, <marlborohempcompany.com>, <marlborohempfarm.com>, <marlborojoint.com>, <marlborolightblunt.com>, <marlborolightcannabiscigarette.com>, <marlborolightcannabis.com>, <marlborolightcbdcigarette.com>, <marlborolighthempcigarette.com>, <marlborolightjoints.com>, <marlborolightmarijuana.com>, <marlborolightspliff.com>, <marlborolightspliffs.com>, <marlboromancannabis.com>, <marlboromansmokescannabis.com>, <marlboromansmokesjoint.com>, <marlboromarijuanacigarette.com>, <marlboromarijuanacigarettenearme.com>, <marlboromarijuanacigaretteshop.com>, <marlboromarijuanacigarettesnearme.com>, <marlboromarijuanacigarettestore.com>, <marlboromarijuanalight.com>, <marlboromarijuanalights.com>, <marlboromcigarette.com>, <marlborospliff.com>, and <marlborospliffs.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: September 10, 2019