WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1246997303 / admin admin
Case No. D2020-2021
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 Contact Privacy Inc. Customer 1246997303 / admin admin, United States.
2. The Domain Name and Registrar
The disputed domain name <marlboroice.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 in English on August 11, 2020.
On August 7, 2020, the Center transmitted an email in English and Malay to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on August 10, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and Malay, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 14, 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
Complainant, Philip Morris USA Inc., is the owner of the trademark MARLBORO, for which it has various registrations in the United States, including;
United States trademark registration number 68502, registered on April 14, 1908;
United States trademark registration number 4171817, registered o July 10, 2012;
United States trademark registration number 5379044, registered on January 16, 2018.
In addition, Complainant owns and operates the domain name <marlboro.com> which directs to a website at “www.marlboro.com”, providing information regarding Complainant’s MARLBORO cigarette products and offers. Complainant also owns several other “marlboro” domain names, including <marlboro.net>, <marlboro.org>, <marlboro.info>, <marlboro.biz>, <marlboro.us>.
Complainant has also submitted evidence which supports that MARLBORO is an internationally well-known trademark and a distinctive identifier of Complainant’s products. Evidence includes numerous decisions in domain name disputes involving MARLBORO, such as:
Philip Morris USA Inc. v. Michele Dinoia, SZK.com,
WIPO Case No. D2005-0171;
Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614;
Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263;
Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan , WIPO Case No. D2011-1735;
Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660;
Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306.
Respondent registered the Domain Name on April 21, 2020. The Domain Name resolves to an inactive website.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the MARLBORO marks and has rights in the domain name incorporating the MARLBORO mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporates Complainant’s MARLBORO mark in its entirety, with an added term “ice”, to confuse Internet users looking for bona fide and well-known MARLBORO products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement is Malaysian.
Complainant submits in its communication to the Center on August 10, 2020, and in the Complaint, that the language of the proceeding should be English. Complainant mainly contends that the Domain Name is formed by Latin characters; that the term “marlboro” which is the dominant portion of the Domain Name, does not carry any specific meaning in the Malaysian language, that Domain Name was registered with the registrar based in the United States; if the documents have to be submitted in Malay, Complainant would have to incur substantial delay and disadvantage due to the requirement for translation and the resulting procedural delays, which would cause disruption to Complainant’s business.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. Complainant may be unduly disadvantaged by having to conduct the proceeding in Malay. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Malay and English. Respondent chose not to respond to the Complaint and comment on the language of the proceeding. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MARLBORO marks, which have been used since at least as early as 1908, well before Respondent registered the Domain Name on April 21, 2020. With Complainant’s rights in the MARLBORO marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Complainant provided evidence of its rights in the MARLBORO marks, which have been registered since at least as early as 1908, which predate the registration of the Domain Name on April 21, 2020, by more than a century. Complainant has also submitted evidence which supports that MARLBORO is an internationally well-known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark MARLBORO.
Here, the Domain Name is confusingly similar to Complainant’s MARLBORO trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is completely incorporated in the Domain Name. The voluntary addition of the term “ice” in relation to the MARLBORO mark in the Domain Name, <marlboroice.com>, does not change the overall impression produced by the Domain Name and does not prevent a finding of confusing similarity between the Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the MARLBORO marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MARLBORO trademarks or to seek registration of any domain name incorporating the trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to an inactive site. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interest in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the MARLBORO marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including United States, where Respondent resides and operates. Therefore, Respondent was likely aware of the MARLBORO marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s well-known MARLBORO trademark in its entirety with an additional term “ice” suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the MARLBORO mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.
At the time of filing of the Complaint, the website was inactive, indicating that the Domain Name was being passively held. The Panel finds that the non-use of the Domain Name would not prevent a finding of bad faith under the doctrine of passive holding in this case. See WIPO Overview 3.0, section 3.3. At the time of the decision, the Domain Name redirected to Complainant’s official website. UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4.
In addition to the circumstances referred to above, Respondent’s failure to file a response and the undelivered Written Notice to Respondent due to false contact details are further indicative of Respondent’s bad faith.
Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboroice.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: September 22, 2020