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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Whois Agent, Domain Protection Services, Inc. / Cary Friedman

Case No. D2021-2122

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 Whois Agent, Domain Protection Services, Inc., United States of America / Cary Friedman, United States of America.

2. The Domain Name and Registrar(s)

The disputed domain name <marlboromedicalcannabis.com> is registered with Name.com, Inc. (Name.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 22, 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 23, 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 28, 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 28, 2021. Subsequently, the Respondent sent the Center 4 terse profanity laced emails professing ignorance of the UDRP process and denying any wrongdoing. The Respondent did not submit a formal response. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. Accordingly, the Center notified the Commencement of Panel Appointment Process on August 18, 2021.

The Center appointed William F. Hamilton as the sole panelist in this matter on August 23, 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 a global manufacturer and seller of cigarettes and tobacco related products. See Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306. The Complainant owns the internationally well-known mark MARLBORO (the “Mark”) and has obtained numerous registrations of the Mark, including but not limited to:

- United States Patent and Trademark Office Reg. No. 0068502 registered on April 14, 1908.
- United States Patent and Trademark Office Reg. No. 4171817 registered on July 10, 2012.
- United States Patent and Trademark Office Reg. No. 5379044 registered on January 16, 2018.

Complainant owns and utilizes the domain name <marlboro.com> to promote the sale of its tobacco related products.

The disputed domain name was registered on May 4, 2021. When the Complaint was filed, the disputed domain name resolved to a commercial parking website with links to websites offering cannabis-related products and services in competition with the Complainant. The disputed domain name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name prominently incorporates the Complainant’s entire Mark followed by the descriptive dictionary words “medical” and “cannabis”. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent registered and used the disputed domain name to lure unsuspecting Internet users to the Respondent’s website for commercial gain.

B. Respondent

Other than 4 terse profanity laced emails expressing ignorance of the UDRP and the procedure, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

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

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

(iii) the disputed domain name was registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The disputed domain name is composed of the Complainant’s Mark followed by the dictionary terms “medical” and “cannabis“. The addition of dictionary terms to a mark within a disputed domain name does not prevent a finding of confusing similarity. A domain name which wholly incorporates a complainant’s mark is sufficient to establish confusingly similarity for the purposes of the Policy irrespective of any added terms. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).

The Top-Level Domain of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.

The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds the disputed domain name was registered and is being used in bad faith.

A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Mark is well known. The disputed domain name appends to the Complainant’s Mark the dictionary words “medical” and “cannabis” with the obvious intent by the Respondent of suggesting that the disputed domain name resolves to a website offering medical cannabis sponsored by the Complainant. Common sense compels the conclusion that the Respondent was quite aware of the Complainants’ well-known Mark when registering and using the disputed domain name.

The current inactive status of the disputed domain name is irrelevant as the continued registration of the disputed domain name by the Respondent deprives the Complainant of the use of the Mark in a corresponding domain name and constitutes a threat hanging over the Complainant. That the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith under the circumstances of this case and the doctrine of passive holding. See WIPO Overview 3.0, section 3.3 and section 3.2.1. In fact, the current passive holding of the disputed domain names is further evidence of the Respondent’s bad faith registration and use.

Finally, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainants’ consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109; and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335.

The Complainant has met its burden under 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 <marlboromedicalcannabis.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: September 2, 2021

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