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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Whois Privacy, Private by Design, LLC / Dan Chaitas

Case No. D2021-2853

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 Whois Privacy, Private by Design, LLC, United States / Dan Chaitas, Israel.

2. The Domain Name and Registrar

The disputed domain name <marlboro.click> (the “Disputed Domain Name”) is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 31, 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 September 10, 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 September 14, 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any Response but did send an informal email (described below) on October 7, 2021. Accordingly, the Center sent Commencement of Panel Appointment Process email to the Parties.

The Center appointed Nick J. Gardner as the sole panelist in this matter on October 27, 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 manufactures, markets, and sells in the United States and numerous other countries cigarettes, including cigarettes under its well-known MARLBORO trademarks, the earliest of which is United States trademark registration No. 0068502 for MARLBORO registered on April 14, 1908. These trademarks are referred to as the MARLBORO trademark in this decision. Cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. The Complainant has for many years used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademark throughout the world and, as a result, has developed substantial goodwill in those trademarks which have become distinctive and uniquely associated with the Complainant and its products.

The Complainant has registered the domain name <marlboro.com> which points to its website at “www.marlboro.com”. The site enables access to information regarding the Complainant’s MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.

The Disputed Domain Name was registered on January 17, 2021. As at the date of this decision it resolves to an empty non-functioning website which merely contains a few generic section headings.

The word “Marlboro” has no separate or independent meaning apart from in relation to the Complainant or its products, save for in relation to the township(s) of that name (see discussion below).

5. Parties’ Contentions

A. Complainant

The Complainant’s case can be summarised as follows.

a) The Domain Name is identical to the MARLBORO trade mark

b) The Respondent does not have any rights or legitimate interests in the Domain Name.

c) The Respondent has registered and used the Domain Name in bad faith as the only conceivable use for any website to which the Domain Name resolves would amount to an attempt to trade on the goodwill of the Complainant and the MARLBORO Trademark.

B. Respondent

The Panel will in its discretion treat the Respondent’s email communication of with the Center as the Response. It is very short and reads as follows
“Case No. D2021-2853
I build apps for communities with news and updates for the welfare of the residents.
marlboro.click Intended for Marlboro unincorporated community in Stark County, Ohio, United States.
Thank you”.

6. Discussion and Findings

Preliminary Matters

The Panel notes this is a case where one Respondent (Whois Privacy / Private by Design, LLC) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be Dan Chaitas and references to the Respondent are to that person.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with 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;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted detailed evidence that it is the owner of the MARLBORO trademark.

It is well established that the generic Top-Level Domain (“gTLD”), in this case “.click”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:

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 organisation) 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 non-commercial 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 has considered the Respondent’s claim that he registered the Disputed Domain Name in connection with an intended app for news and updates for the welfare of the residents of Marlboro unincorporated community in Stark County, Ohio, United States. A simple Internet search confirms there is an unincorporated community of that name in Ohio with a population of some 4,300 people. The Panel does not however regard the Respondent’s claim to be credible. There is no obvious reason why the Respondent based in Israel should be engaged in such a project and absolutely no corroborating evidence has been provided. As noted in WIPO Overview 3.0 at section 2.2 “If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence”. The Panel declines to accept the Respondent’s explanation which seems more likely than not to be a self-serving explanation created in response to the present Complaint.

Accordingly none of the factors in Paragraph 4(c) apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Names or to use the MARLBORO trade mark. The Complainant has prior rights in the MARLBORO trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). For the reasons discussed above the Panel concludes the Respondent has failed to produce such evidence.

Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the distinctive nature of the MARLBORO trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the MARLBORO trade mark, and the identical nature of the Domain Name to the MARLBORO trade mark, and the lack of any credible explanation from the Respondent as to why he registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent linked to the Disputed Domain Name comprises a non-functioning empty structure with no content which strikes the Panel as a template or perhaps automatically generated. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 3.0 at section 3.2 as follows “3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In this case, given the highly distinctive nature of the Complainant’s MARLBORO trademark, and the fact that the Domain Name is identical to that trademark leads the Panel to conclude the registration and use are in bad faith. The Panel cannot conceive of any credible use for the Domain Name that did not involve an attempt to trade off the Complainant’s reputation and this must have been apparent to the Respondent when registering the Domain Name. Further the Panel notes the Respondent has not provided any credible case of legitimate use that he might have. The Panel infers that none exists. Accordingly, and applying the principles in the below noted UDRP decisions the Panel finds that the Domain Name has been registered and is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <marlboro.click> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: November 10, 2021

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