WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-2121

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <marlboromhq.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 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, 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 July 8, 2021 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 July 13, 2021.

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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on August 30, 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 is the owner of numerous trademark registrations worldwide, at least registered in the United States, in particular

- MARLBORO, U.S. trademark no. 0068502 registered on April 14, 1908;

- MARLBORO, U.S. trademark no. 4171817 registered on July 10, 2012; and

- MARLBORO, U.S. trademark no. 5379044 registered on January 16, 2018.

The Complainant uses these trademarks in connection with several variations of MARLBORO brand cigarettes.

The Complainant has registered the domain name <marlboro.com>, which points to the Complainant’s website “www.marlboro.com” enabling access to information regarding the Complainant, MARLBORO products, and special offers to age-verified adult smokers 21 years of age or older. In addition, the Complainant owns the domain name registration for <marlboro.net>.

This disputed domain name is <marlboromhq.com> registered on May 26, 2021, and at the time of filing the Complaint, the disputed domain name resolved to a site with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the mark MARLBORO by virtue of use and registrations. MARLBORO is a famous and well-known brand in many countries worldwide, which is used in connection with several variations of MARLBORO brand cigarettes. The Complainant has marketed and sold its goods using this trademark since 1883, which is well before the Respondent’s registration of the disputed domain name on May 26, 2021.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s rights in the MARLBORO marks. The addition of the generic Top-Level Domain (“gTLD”) “.com” is merely instrumental and shall be disregarded for the determination of the confusing similarity, whereas the addition of the term “mhq” increase confusing similarity since this term is closely linked and associated with the Complainant’s brand. MHQ is the Complainant’s rewards app, which enables adult smokers 21 years of age or older, who are enrolled in the Marlboro Rewards program, to scan and enter reward codes found on their packs for points.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant adds that there is no evidence of the Respondent’s use or preparations to use the disputed domain name for a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or that it has any legitimate noncommercial or fair use of the disputed domain name.

The Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant seeks a decision 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

To succeed, in a UDRP complaint, complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

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

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. See Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.

The Complainant has demonstrated ownership of its MARLBORO trademarks, at least in the U.S. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the MARLBORO mark.

As indicated in section 1.11.1 of the WIPO Overview 3.0, “the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. It is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Therefore, the addition of the TLD “.com” to the Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

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

As stated in section 1.7 of the WIPO Overview 3.0, “The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

The Panel has duly taken into account that the disputed domain name incorporates the whole of the Complainant’s MARLBORO word trademark. Moreover, in creating the disputed domain name, the Respondent has added the related term “mhq” to the Complainant’s famous MARLBORO trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. The fact that such term is closely linked and associated with the Complainant’s brand and trademark is relevant for purposes of discussion under the second and third element.

Past UDRP panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks (See Aviva Brands Limited v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2018-2449, where the panel found that the addition of the terms “share” and “plan” to the AVIVA trademark is not sufficient to exclude confusing similarity, all the more that they are related to the Complainant’s activities and that they make the disputed domain name very confusingly similar to the Complainant’s own domain name <avivashareplans.com>).

Based on the foregoing, the disputed domain name is clearly confusingly similar to the Complainant’s MARLBORO trademark.

Therefore, the Panel considers the requirements of the first element of paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is well established that, as it is put in the WIPO Overview 3.0, section 2.1, while the overall burden of proof in the proceedings is on the complainant, proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

In the instant case, the pertinent WhoIs information identifies the Registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” which does not resemble the disputed domain name in any manner – thus, where no evidence, including the WhoIs record for the disputed domain name, suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(ii). See, e.g. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

The disputed domain name incorporates the entirety of the Complainant’s trademark with the addition of the term “mhq”, which is the name of the Complainant’s rewards app found on Google Play. Accordingly, construction of the disputed domain name in these circumstances is such to carry a risk of implied affiliation that cannot confer rights or legitimate interests on the Respondent.

The Panel takes due account of the fact that the Respondent is using the disputed domain name to resolve to a website featuring links to third-party websites, some of which directly compete with the Complainant's business. For instance, the website also features a link “cigarettes” that directly references the Complainant and its business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. Prior UDRP panels have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy. See WIPO Overview 3.0, section 2.9.

Furthermore, the disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests. Past UDRP panels have consistently upheld this view. See Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev, WIPO Case No. D2014-1612.

For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Therefore, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy it should be established that the disputed domain name has been registered and is being used in bad faith.

Having carefully considered the case file, the Panel considers 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 trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name on May 26, 2021, the Complainant has long-standing rights to the MARLBORO trademarks and have been using such marks since 1908, which demonstrates the Complainant’s enormous fame. See MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412. Moreover, the addition of the term “mhq” further supports an inference that the Respondent was aware of the Complainant, noting that the term directly correlates to the Complainant’s rewards app.

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, particularly: “(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;” and “(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 Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under paragraph 4(b)(i) of the Policy, because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. See Luigi Lavazza S.p.A. v. Oleg Kinzyabulatov, Private Person, WIPO Case No. D2021-0999.

Furthermore, the Panel found that the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain dame, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy, with no good faith use possible. More specifically, where the disputed domain name incorporates the related term “mhq” to the Complainant’s famous MARLBORO trademark, there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name. Similarly, the use of the disputed domain name to host sponsored links that redirect Internet users to third-party websites falls within the meaning of bad faith use under paragraph 4(b)(iv).

Moreover, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.6. See also, Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., and Sabatino Andreoni, WIPO Case No. D2003-0230, where it was founded that “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”

In light of the above facts and reasons, the Panel therefore determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in paragraph 4(a)(iii) 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 <marlboromhq.com> be transferred to the Complainant.

Ganna Prokhorova
Sole Panelist
Date: September 13, 2021