WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / JaeHyuk Lim

Case No. D2020-1019

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / JaeHyuk Lim, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <marlboro2.live>, <marlboro3.live>, <marlboro4.live>, and <marlboro5.live> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2020 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 4, 2020.

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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2020.

The Center appointed Felipe Claro as the sole panelist in this matter on June 9, 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 owns numerous trademark registrations within the United States of America, including:

- MARLBORO Registration 68,502, registered on April 14, 1908, for “cigarettes”

- MARLBORO Registration 3,365,560, registered on January 8, 2008, for “tobacco products, namely, snus”

- MARLBORO Registration 3,419,647, registered on April 29, 2008, for “tobacco products, namely, smokeless tobacco”

The Complainant also owns the domain name <marlboro.com>. This domain name points to the Complainant’s website at “www.marlboro.com”, which enables access to information regarding Complainant’s products, and special offers to age-verified adult smokers 21 years of age or older. In addition, the Complainant owns the domain name <marlboro.net>, among others.

The disputed domain names were registered on March 14, 2020. The Respondent has used the disputed domain names either to direct Internet users to a website that features adult content or to websites that resolve to blank pages and lack content

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are confusingly similar to its trademarks, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and have been used in bad faith.

The Complainant has spent a considerable amount of time and money protecting its intellectual property rights, and advertising and promoting the MARLBORO trademark. It has developed substantial goodwill in the MARLBORO trademarks. The MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products.

Numerous UDRP panels already have determined that the MARLBORO trademarks are famous worldwide. See, Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263; and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

The Complainant has valuable trademark rights in its MARLBORO trademarks, and uses these trademarks in connection with several variations of MARLBORO brand cigarettes.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a suitable response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a), and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

The Complainant owns many MARLBORO formative trademarks in the United States of America. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The Complainant is not required to register its marks within the country of the Respondent to protect its rights in those marks. See WIPO Overview 3.0 at section 1.1.2.

When comparing the disputed domain names to the Complainant’s trademarks, the relevant comparison to be made is between the second-level domain of the disputed domain names and the Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429.

The disputed domain names include the Complainant’s MARLBORO trademark and simply add the numbers “2”, “3”, “4” or “5” to the end of the trademark. The mere addition of these numerical terms to the Complainant’s distinctive trademark does not erase the confusing similarity between the disputed domain names and the Complainant’s trademark. The disputed domain names should be considered confusingly similar and almost identical to the Complainant’s trademark. It is established that the addition of dictionary or descriptive terms is not sufficient to overcome a finding of confusing similarity. See WIPO Overview 3.0 at section1.8.

Considering the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The existence of trademark registrations in the name of the Complainant for the MARLBORO trademark is prima facie evidence of the validity of the term “Marlboro” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the MARLBORO trademark in commerce on or in connection with the goods and/or services specified in the registrations.

The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which demonstrates a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008- 0642. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

The pertinent WhoIs information identifies the Registrant as “JaeHyuk Lim”, which does not resemble the disputed domain names in any manner. There is no evidence that the Respondent is commonly known by the disputed domain names, and the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain names. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. As anticipated above, at the time of filing the Complaint, the Respondent was using a privacy service, which past UDRP panels have also found to equate to a lack of legitimate interest. See Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855.

The Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names. The Respondent’s inclusion of the Complainant’s trademark in the disputed domain names is a direct effort to take advantage of the fame and goodwill that the Complainant has built in its brand, and the Respondent is taking unfair advantage of the confusingly similar disputed domain names.

The Respondent is using confusingly similar domain names to mislead the Complainant’s customers, and is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain names. See Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211.

The Respondent has used the disputed domain names either to direct Internet users to a website that features adult content or to direct Internet users to websites that resolve to blank pages and lack content. Past UDRP panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content reveals a lack of rights or legitimate interests. See Bayerische Motoren Werke AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jaroslaw Matula, WIPO Case No. D2016-1526.

The Respondent has failed to make use of some of the disputed domain names and has not demonstrated any attempt to make legitimate noncommercial or fair use of the disputed domain names, which demonstrates a lack of rights or legitimate interests in the disputed domain names, as confirmed by numerous UDRP panels. See Philip Morris USA Inc. v. Muhammad Faisal, WIPO Case No. D2016-0621.

The Respondent registered the disputed domain names on March 14, 2020, which is significantly after the Complainant filed for registration of its MARLBORO trademark in the United States of America, the Complainant’s first use in commerce of its trademark in 1883, and the Complainant’s registration of its <marlboro.com> domain name on March 6, 2000.

Considering the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant and its trademarks are well-known, with numerous trademark registrations. The Complainant has marketed and sold its goods and services using the MARLBORO trademark since 1883, which is well before the Respondent’s registration of the disputed domain names on March 14, 2020.

By registering the disputed domain names, each one on the same day and each one incorporating the Complainant’s trademark in its entirety plus a numerical suffix, the Respondent has created domain names that are confusingly similar to the Complainant’s trademark, as well as its <marlboro.com> and <marlboro.net> domain names. As such, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Furthermore, the website found at the Respondent’s <marlboro3.live> domain name prominently features the Complainant’s MARLBORO trademark, together with pornographic content.

The composition of the disputed domain names, and the use of the MARLBORO trademarks on the disputed domain names’ websites makes it highly unlikely that the Respondent was unaware of the Complainant, its brands and business at the time the disputed domain names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226. The Respondent purportedly selected the disputed domain names knowing about the Complainant and its trademarks. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Furthermore, at the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. See MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412. The website of the disputed domain name <marlboro3.live> features sexually explicit, pornographic content, which provides evidence of the Respondent’s bad faith registration and use of this disputed domain name. Past UDRP panels have held that a Respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name. See Microsoft Corp. v. Horner, WIPO Case No. D2002-0029.

The other disputed domain names currently resolve to inactive sites and there is no evidence that they are being used. Passive holding of a domain name can also constitute a factor in finding bad faith registration and use. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In this case, the disputed domain names are confusingly similar to the Complainant’s trademarks, and the Respondent has made no use of some of the disputed domain names, factors which are considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232.

The Panel finds that the disputed domain names intend to cause confusion among Internet users as to the source of the disputed domain names, and the disputed domain names should be considered as having been registered and used in bad faith.

The Respondent has registered the disputed domain names that infringe the Complainant’s trademarks. The number of infringing domain names simultaneously registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. See Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602.

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230. See also WIPO Overview 3.0 at section 3.6.

The Respondent knew of and targeted the Complainant’s trademark as well as registered and used the disputed domain names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No.D2014-1754.

Considering the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.

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, <marlboro2.live>, <marlboro3.live>, <marlboro4.live>, and <marlboro5.live> be transferred to the Complainant.

Felipe Claro
Sole Panelist
Date: June 23, 2020