WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Su Mei Lin
Case No. D2019-1636
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 Su Mei Lin, China.
2. The Domain Name and Registrar
The disputed domain name <usa-marlboro.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 9, 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 name, is a resident of China and registered the disputed domain name on May 28, 2019, which does not redirect to any active website.
5. Parties’ Contentions
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 worldwide famous.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s MARLBORO trademark as it includes the latter in its entirety simply added by the geographic term “USA” and a hyphen. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is neither commonly known by the disputed domain name nor does Respondent’s name resemble the disputed domain name in any manner, (2) Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s MARLBORO trademark, (3) Respondent has failed to make any bona fide or other legitimate use of the disputed domain name which resolves to a blank page and lacks content on the Internet and (4) Respondent registered the disputed domain name significantly after the first filing for registration of Complainant‘s MARLBORO trademark with the USPTO as well as Complainant’s registration of the domain name <marlboro.com> in 2000. Finally, Complainant argues that Respondent registered and is using the disputed domain name 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 name, which is why it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s trademark at the time the disputed domain name was registered, (2) though the disputed domain name currently resolves to an inactive website and is not being used, there is still no indication for any plausible good faith reason or logic for Respondent to have registered the disputed domain name, 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 the disputed domain name.
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 name is 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 name; and
(iii) that the disputed domain name has been registered and is 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 name <usa-marlboro.com> is confusingly similar to the MARLBORO trademark in which Complainant has rights.
The disputed domain name incorporates 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, by itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “USA” together with a hyphen does not dispel the confusing similarity arising from the incorporation of Complainant’s MARLBORO trademark in the disputed domain name.
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 name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, 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 name and Respondent does not appear to have any trademark rights associated with the term “Marlboro”. So far, the disputed domain name apparently does not redirect to any content on the Internet, but is merely passively held by Respondent. Therefore, Respondent is making neither a bona fide offering of goods or service under nor a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 the disputed domain name was registered and is being used by Respondent in bad faith.
With regard to the fact that the disputed domain name so far apparently has only been passively held by Respondent, UDRP panelists 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 disputed domain name may be put.
The Panel agrees with the finding of previous UDRP panels (e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Pieropan, WIPO Case No. D2011‑1735) that Complainant’s MARLBORO trademark is famous worldwide and that, therefore, it is implausible that Respondent was unaware thereof when registering the disputed domain name. Moreover, and especially since Respondent did not submit a response, the case file lacks any indication as to why Respondent needed to rely on Complainant’s MARLBORO trademark in the disputed domain name if not to somehow profit from this trademark’s famous character, which is why it is also implausible to think of any good faith use by Respondent to which the disputed domain name may be put. Taken this altogether, there is no way other but to find that Respondent registered and is making use of the disputed domain name in bad faith within the broader meaning of paragraph 4(b) of the Policy. In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false WhoIs contact information since the Notification of Complaint sent to Respondent by the Center could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the conclusion of a bad faith registration and use of the disputed domain name.
Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <usa-marlboro.com> be transferred to Complainant.
Stephanie G. Hartung
Date: August 22, 2019