WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Harutyun Tonikyan

Case No. D2019-1468

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 Harutyun Tonikyan, Armenia.

2. The Domain Names and Registrar

The disputed domain names <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, <sellmarlboro.online>, and <sellmarlboro.website> 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 June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 24, 2019.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 1, 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 company organized under the laws of the United States that belongs to one of the leading tobacco manufacturers worldwide. Complainant’s brands include, inter alia, the “Marlboro” cigarettes.

Complainant has provided evidence that it is the owner of numerous trademark registrations worldwide relating to its “Marlboro” brand, including the following with protection for the United States:

- Wordmark MARLBORO, United States Patent and Trademark Office (“USPTO”), Registration Number: 68502, Registration Date: April 14, 1908, status: active.

Furthermore, Complainant has evidenced to own various domain names relating to its MARLBORO trademark, including <marlboro.com>, which redirects to Complainant’s official website at “www.marlboro.com” promoting Complainant’s MARLBORO products and services.

Respondent, according to the WhoIs information for the disputed domain names, is a resident of Armenia and registered the disputed domain names on May 21, 2019, out of which <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, as well as <sellmarlboro.website> redirect to a website at “www.cigsweb.com” offering a variety of tobacco products for online sale, including some of Complainant’s direct competitors on the tobacco market, while <sellmarlboro.online> does not redirect to any active website.

5. Parties’ Contentions

A. Complainant

Complainant contends to have spent substantial time, effort, and money advertising and promoting its MARLBORO trademark throughout the United States, the result being that - as held by a variety of UDRP panels - its MARLBORO trademark is meanwhile famous.

Complainant submits that the disputed domain names are confusingly similar to Complainant’s MARLBORO trademark as they include the latter in its entirety added by terms like “purchase”, “sell”, “get”, or “buy”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is not commonly known by the disputed domain names, (2) Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s MARLBORO trademark, (3) Respondent is neither making a bona fide offering of goods or services under nor a legitimate noncommercial or fair use of the disputed domain names, (4) Respondent offers and attempts to sell the products of Complainant’s direct competitors under the disputed domain names, however, thereby not fulfilling the so-called “Oki Data” requirements, and (5) Respondent has failed to make any bona fide or other legitimate use of the disputed domain name <sellmarlboro.online> which lacks any content on the Internet. Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) Respondent has demonstrated a knowledge of and familiarity with Complainant’s MARLBORO brand and business when creating the disputed domain names and using four out of five of them to run a website which offers for sale not only Complainant’s cigarette products, but also those of Complainant’s direct competitors, (2) though the disputed domain name <sellmarlboro.online> currently does not redirect to any active website, there is still no indication in the case file for any non-infringing purpose for which this disputed domain name could be used, and (3) on the balance of the facts to this case, it is more likely than not that Respondent knew of and targeted Complainant’s trademark when registering and making use of the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

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

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

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

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, <sellmarlboro.online> and <sellmarlboro.website> are confusingly similar to the MARLBORO trademark in which Complainant has rights.

The disputed domain names all incorporate the MARLBORO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether e.g. descriptive or geographic) to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive terms “buy”, “get”, “purchase”, or “sell” does not dispel the confusing similarity arising from the incorporation of Complainant’s MARLBORO trademark in the disputed domain names. Other than that, for the purposes of comparison under the first element, the generic Top Level Domains (gTLD) “.online” as well as “.website” may be disregarded, being a mere technical requirement of registration (see WIPO Overview 3.0, section 1.11.1).

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant’s MARLBORO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the term “marlboro”. Rather, Respondent uses four out of five of the disputed domain names, namely <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, as well as <sellmarlboro.website>, to redirect Internet users to a website at “www.cigsweb.com” where Respondent offers a variety of tobacco products for online sale, including those of Complainant’s direct competitors on the tobacco market. Such making use of the disputed domain names neither qualifies as a bona fide offering of goods or services (in particular since the principles under the so-called “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) are not fulfilled when offering competing products under a complainant’s trademark (see WIPO Overview 3.0, section 2.8) nor as using the disputed domain names for a legitimate noncommercial or fair purpose. Besides, as for the so far passively held disputed domain name <sellmarlboro.online>, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial and fair use.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that all disputed domain names were registered and are being used by Respondent in bad faith.

With regard to the passively held disputed domain name <sellmarlboro.online>, UDRP panels have found as a general rule that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s trademark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.

The Panel agrees with Complainant’s line of argumentation that the variety of the disputed domain names created by Respondent clearly demonstrates Respondent’s knowledge of and familiarity with Complainant’s MARLBORO trademark by the time of the disputed domain names’ registration and, furthermore, that the disputed domain names are directly targeting Complainant’s MARLBORO trademark, noting their global renown. Moreover, Respondent’s use of the disputed domain names <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, as well as <sellmarlboro.website> to redirect to a website at “www.cigsweb.com” offering a variety of tobacco products for online sale, including those of Complainant’s direct competitors on the tobacco market, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsements of this website. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. This finding includes as well the passively held disputed domain name <sellmarlboro.online>, as the above mentioned factors under the passive holding doctrine for the finding of a bad faith use in the case at hand are clearly fulfilled.

Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <buymarlboro.online>, <getmarlboro.online>, <purchasemarlboro.online>, <sellmarlboro.online>, and <sellmarlboro.website> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: August 8, 2019