WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Cong ty CP dau tu phat trien Heng Leong

Case No. D2021-1204

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 Cong ty CP dau tu phat trien Heng Leong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <bdsmarlboro.com> (“Disputed Domain Name”) is registered with iNET Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2021, the Center sent a reminder request to the Registrar. On April 27, 2021, 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. On April 27, 2021, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On April 27, 2021, the Complainant confirmed that it requested for English to be the language of the proceeding in the Complaint submitted. The Respondent did not comment on the language of the proceeding.

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 in both English and Vietnamese, and the proceedings commenced on May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2021.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 2, 2021. 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, Philip Morris USA Inc., is a company based in the United States, that has manufactured and sold tobacco, cigarette products under MARLBORO trademarks since as early as 1883.

The Complainant’s trademarks MARLBORO have been registered for goods and services in class 34 for tobacco, cigarette products in the United States under trademark registration Nos. 68502, 4171817, 5379044 registered as early as in 1908.

Additionally, the Complainant’s trademarks MARLBORO have been recognized as famous in many earlier decisions (See, e.g., Philip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2452; and Philip Morris USA Inc. v. Contact Privacy Inc. / Stephanie Sutton, WIPO Case No. D2019-3073).

Further, the Complainant is the registrant of some domain names featuring the trademarks MARLBORO, notably the domain name <marlboro.com> registered on March 6, 2000.

The Disputed Domain Name <bdsmarlboro.com> was created on March 6, 2021. As of the date of this Decision, the Disputed Domain Name is resolving to a website showing the content “dienvanhoan.example.com, Powered by VESTA”. However, the Disputed Domain Name used to resolve to a website offering investment advice and real estate services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of numerous trademark registrations for MARLBORO within the United States. The Complainant also claims that through its widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products. Further, the Complainant submits that the previous UDRP panels have found that the MARLBORO trademarks are famous.

Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the MARLBORO trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks MARLBORO in its entirety, and the addition of the generic Top-Level Domain (“gTLD”) “.com” and the term “bds” could not dispel any likelihood of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant contends that the Complainant has exclusive rights to use the MARLBORO trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates granted by United States Patent Trademark Office (“USPTO”).

Second, the Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and the Complainant also has not given the Respondent permission to use its trademarks in any manner, including in domain names.

Third, the Complainant contends that the Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests in the Disputed Domain Name. Particularly, the pertinent WhoIs information identifies the Registrant as “Cong ty CP dau tu phat trien HENG LEONG,” which does not resemble the Disputed Domain Name in any manner. Thus, it suggests that the Respondent is not commonly known by the Disputed Domain Name.

Fourth, the Complainant argues that the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the Respondent is using the Disputed Domain Name to redirect Internets users to contents unrelated to the Complainant.

Finally, the Complainant contends that the Respondent registered the Disputed Domain Name after the Complainant’s registration and first use of its MARLBORO trademarks in commerce.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant contends that the Complainant and its MARLBORO trademarks have been put in use since 1883, which is well before the Respondent’s registration of the Disputed Domain Name. In addition, the Complainant submits that its MARLBORO trademarks are well known.

Second, the Complainant argues that at the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known trademarks MARLBORO, and that registration therefore constitutes bad faith.

Third, the Complainant argues that, by registering and using the Disputed Domain Name, the Respondent is intentionally attempting to attract and redirect Internet users to the website thereunder where it offers and promotes financial services for commercial gain and that supports a finding of bad faith use.

Finally, the Complainant contends that the Respondent’s use of the Disputed Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use because the Disputed Domain Name is confusingly similar to the Complainant’s MARLBORO trademarks and the website thereunder promotes services unrelated to the Complainant, while blocking the Complainant from registering the Disputed Domain Name.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated April 27, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by April 30, 2021.

On April 27, 2021, the Complainant submitted a request that English be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and as shown in Annex 3 of the Complaint that the website under the Disputed Domain Name used to contain contents in English; these suggest that the Respondent has ample knowledge of the English language and would be able to communicate quite well in English;

(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese.

Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party solely taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

B. The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that The Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has evidenced that it has rights in and to the trademarks MARLBORO, which were registered in the United States before the registration of the Disputed Domain Name. In addition, it is evidenced in and similar to the other UDRP decisions that the MARLBORO trademarks are well known for tobacco and cigarette products.

In the case at hand, the Panel notes that the Complainant does not provide the evidence on trademark registrations for MARLBORO in Viet Nam where the Respondent is located. However, it is well established that the jurisdictions where the trademark is valid, its date of registration (or claimed first use), and the goods and/or services for which it is registered or used in commerce, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See the section 1.1 of the WIPO Overview of WIPO Panel Views on Select UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Second, the Disputed Domain Name comprises the Complainant’s MARLBORO trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the MARLBORO trademarks is the addition of the prefix “bds”, which is often understood as the abbreviation of “bất động sản” in Vietnamese; this phrase means real estate in English, and refers to the business lines of investment and real estate services of the Respondent as it was shown in the website under the Disputed Domain Name in the past (Annex 3 of the Complaint).

As such, despite the additional term “bds”, “marlboro” remains clearly recognizable in the Disputed Domain Name as a core and distinctive element. In any event, the addition of such word does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

Finally, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MARLBORO trademarks, and paragraph 4(a)(i) of the Policy is established.

B Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights featuring the element “marlboro” in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademarks MARLBORO.

The Panel finds, similarly to other UDRP panels, that MARLBORO trademarks are recognized as a well-known trademark (See, e.g., Philip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2452; and Philip Morris USA Inc. v. Contact Privacy Inc. / Stephanie Sutton, WIPO Case No. D2019-3073).

Further, it is well proved and evidenced by the Complainant that the Disputed Domain Name used to resolve to the Respondent’s website offering investment advice and real estate services, as shown in the Annex 3 of the Complaint. In this regard, although the services offered on such website is totally unrelated to the Complainant’s goods, the Panel is of the view that the Respondent, by using the famous MARLBORO trademarks in the Disputed Domain Name for a website promoting investment advice and real estate services without any accurate and prominent disclaimer of the (lack of) relationship with the Complainant, intends to ride on the reputation of the MARLBORO trademarks, namely, baiting consumers and then directing them to its services. Thus, the Panel finds that the Respondent’s use of the Disputed Domain Name is not a bona fide offering of goods or services.

Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, since the company name of the Respondent is “Cong ty CP dau tu phat trien Heng Leong” (in English: Heng Leong Development Investment JSC), it is not evidenced that the Respondent is identified by “bdsmarlboro” or that the Respondent has any rights in it.

Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a) of the Policy is established.

C Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(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 on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name. In this regard, although the Complainant only provides the trademark registrations for MARLBORO in the United States, the Panel finds that, according to what the Complainant established and similarly to previous UDRP decisions, the trademarks MARLBORO are well known across the world (See, e.g., Philip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No.D2011-1735; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2452; and Philip Morris USA Inc. v. Contact Privacy Inc. / Stephanie Sutton, WIPO Case No. D2019-3073). The well-known MARLBORO trademarks and domain name <marlboro.com> of the Complainant all predate the registration of the Disputed Domain Name.

The Disputed Domain Name incorporates the Complainant’s well-known trademarks MARLBORO in its entirety, adding the term “bds”. As mentioned above, such term is a common abbreviation of the phrase “bất động sản” (in English: real estate), indicating the Respondent’s service.

Given the famous nature and wide use of the MARLBORO trademarks by the Complainants across the world, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, the Panel is of the view that the nature of the Disputed Domain Name, incorporating the Complainant’s famous trademark plus the term “bds”, indicates itself that the Respondent deliberately selected the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill. See the section 3.2.1 of the WIPO Overview 3.0.

Further, as the Disputed Domain Name comprises the Complainant’s well-known MARLBORO trademark as a unique distinctive element, it is undisputed that many Internet users attempting to visit the Complainant’s website through a search for “MARLBORO” may end up on the web page set up by the Respondent. In the Panel’s view, by using the Disputed Domain Name for a website offering investment advice and real estate services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks, which supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a) of the Policy is established.

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 <bdsmarlboro.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: June 15, 2021