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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Luce Khen

Case No. D2020-0279

1. The Parties

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

The Respondent is Luce Khen, Singapore.

2. The Domain Name and Registrar

The disputed domain name <marlborofull.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 February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. On February 18, 2020, the Center extended the Response due date until March 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2020.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on March 25, 2020. 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 Philip Morris USA Inc., a company established in 1847 and one of the leading manufacturer of cigarettes in the United States.

The Complainant has used the MARLBORO trademark since 1883 and holds numerous trademark registrations in various jurisdictions, especially within the United States, including United States Reg. No. 68,502 for MARLBORO, registered on April 14, 1908.

The Complainant has registered the domain name <marlboro.com>, on March 6, 2000, which enables access to information regarding the Complainant’s MARLBORO products. In addition, the Complainant owns the domain name registration for <marlboro.net>.

The disputed domain name was registered on December 27, 2019. The disputed domain name resolves to a website that resolves to a “coming soon” page and lacks content.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name contains the Complainant’s trademark MARLBORO in its entirety and simply adds the generic, descriptive term “full” to the trademark.

The Complainant adds that the disputed domain name is confusingly similar to the Complainant’s MALBORO trademark.

The Complainant affirms that the Respondent is not sponsored by or affiliated with the Complainant.

Further on, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register the disputed domain name and that the Respondent is not commonly known by the disputed domain name.

In addition to that, the Complainant notes that the Respondent is using the disputed domain name to direct Internet users to a “coming soon” page and lacks content, which evidences a lack of rights or legitimate interests.

The Complaint also argues that the Respondent has failed to make use of the disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past UDRP panels.

Furthermore, the Complainant claims the disputed domain name was registered and is being used in bad faith, noting, among other claims, that the Respondent knew or should have known of the Complainant’s trademark at the time of registration of the disputed domain name, and that the passive holding of the disputed domain name constitutes bad faith use in these circumstances.

Finally, the Complainant seeks to have the disputed domain name transferred to itself.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name;

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for MARLBORO, in different jurisdictions, therefore holding rights in the MARLBORO mark.

The disputed domain name incorporates the MARLBORO trademark in its entirety, with the mere addition of term “full” and the generic Top-Level Domain (“gTLD”) “.com”.

The addition of a dictionary term does not prevent a finding of confusing similarity with the Complaint’s mark.

Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that prior UDRP panels developed a consensual view that while the burden of proof remains on the complainant it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

On the record, the Panel verifies that the Complainant is the owner of several MARLBORO trademark registrations and that it has no businesses or other relationships with the Respondent.

The Complainant has not authorized, licensed or permitted the Respondent to use the trademark MARLBORO. There is no evidence that the Respondent has been or is commonly known by the disputed domain name, is using the disputed domain name in connection with a bona fide offering of goods or services, or is making a legitimate noncommercial or fair use of the disputed domain name.

Additionally, the Respondent has failed to produce any evidence to establish rights of legitimate interests in the disputed domain name. Likewise, no evidence has been found to suggest that the Respondent has been commonly known by the disputed domain name; nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.

By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.

Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Considering the wide recognition of the Complainant’s trademark for manufacturing cigarettes and all evidence presented by the Complainant, it is clear that the Respondent was aware of the Complainant’s trademark when it chose the disputed domain name.

As a matter of fact, when the disputed domain name was registered by the Respondent, the trademark MARLBORO was already registered and widely used in connection to the Complainant’s activities.

Thus, the Panel finds that the Respondent has intentionally registered the disputed domain name with the sole objective of making a connection with the Complainant’s trademark.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that bad faith use could be established where a disputed domain name has not been actively used. Not all the grounds which supported a bad faith finding in that case are present in the facts as set out in the Complaint. However, the notoriety of the Complainant’s mark, the failure by the Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain name, and the fact that it is not possible to conceive of any active use of the disputed domain name which would amount to good faith use and/or would not infringe the Complainant’s rights cumulatively support a finding by the Panel that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has established the third element of the Paragraph 4(a) of the Policy.

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 name <marlborofull.com> be transferred to the Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Date: April 8, 2020

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