WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Christine Englehart, Jeu de Paume, Inc.

Case No. D2021-2883

1. The Parties

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

Respondent is Christine Englehart, Jeu de Paume, Inc., Florida, USA.

2. The Domain Name and Registrar

The disputed domain name <marlboro360.com> (the “Domain Name”) 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 September 1, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2021.

The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on October 6, 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

Complainant (and various predecessor entities) has produced, marketed and sold its tobacco and cigarette products worldwide since as early as 1883.

Complainant, a company based in the USA, is the owner of numerous trade mark registrations for the MARLBORO mark (“Complainant’s Mark”), within the USA and around the world covering cigarettes and tobacco products, including the following:

Complainant is the registered owner of the domain name <marlboro.com> which points to Complainant’s website “www.marlboro.com”, and enables access to information regarding Complainant’s products. In addition, Complainant owns the domain name registration for <marlboro.net>.

According to the publicly available WhoIs, the Domain Name was registered on July 10, 2021 and as at the date of this Decision, the Domain Name is not resolving to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it adopts the Mark in its entirety with the addition only of the numeric term “360” at the end. Complainant asserts that it has valuable rights in Complainant’s Mark and it uses Complainant’s Mark in connection with several variations of MARLBORO brand cigarettes.

Complainant claims that it has spent substantial time, effort and money advertising and promoting Complainant’s Mark throughout the USA and as such has developed substantial goodwill in Complainant’s Marks. Through such widespread and extensive efforts Complainant’s Mark has become distinctive and is uniquely associated with Complainant and its products. Additionally, Complainant contends that numerous UDRP panels have recognized and determined that Complainant’s Mark is famous.

Complainant submits that Respondent is not sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s Mark in any manner, including in domain names.

Further, Complainant contends that Respondent is not commonly known by the Domain Name, nor is Respondent making a bona fide offering of goods or services, which evidences a lack of rights or legitimate interests in the Domain Name.

Finally, Complainant submits that by registering the Domain Name that includes Complainant’s famous trademark in its entirety, Respondent has created a domain name that is not only confusing, but it demonstrates a knowledge of and familiarity with Complainant’s brand and business.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has operated a cigarette and tobacco products business in the USA since 1883. Complainant’s Mark is iconic and closely associated with Complainant and its products.

The Domain Name reproduces Complainant’s Mark in its entirety, along with the term “360”, which typically refers to a complete trip around the edge of the circle or a complete rotation of some sort. While Complainant does not suggest it has any particular association or connection with the term “360”, given the well-known meaning of the term “360” and the highly distinctive and iconic nature of Complainant’s Mark, the addition of “360” is still likely to denote to Internet users an individual or company that makes or is otherwise associated with MARLBORO brand cigarettes and tobacco products. The Domain Name is therefore confusingly similar to Complainant’s Mark.

The first ground under the Policy is made out.

B. Rights or Legitimate Interests

Complainant submits that Respondent lacks rights or legitimate interests in the Domain Name as it has not used the Domain Name in connection with a bona fide offering of goods and services, has no relationship with Complainant and is not licensed or otherwise authorized to register or use Complainant’s Mark. Given Respondent has registered a domain name which contains Complainant’s Mark in its entirety, that raises a prima facie case against Respondent.

In the absence of any permission or authorisation from Complainant to use Complainant’s Mark, along with Respondent’s failure to respond to Complainant’s allegations, the Panel finds that the use of the Domain Name by Respondent is likely to result in consumers being confused into believing that the Domain Name is connected to Complainant. Even though Respondent is passively holding and not actively using the Domain Name at present, if it did so, it would be likely to mislead or deceive consumers into believing they were accessing Complainant’s website, contrary to the fact.

Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose.

Accordingly, the second ground under the Policy is made out.

C. Registered and Used in Bad Faith

Complainant submits that Respondent has improperly registered a domain name that includes Complainant’s famous trademark and that this shows it had knowledge of and familiarity with Complainant’s brand and business. There is obvious merit in this submission. Even though the Domain Name does not resolve to any active website at present, past UDRP panels have noted that the word bad faith “use” in the context of Policy paragraph 4(a)(iii) does not require a positive act on the part of a respondent and that passively holding a domain name may constitute bad faith use: See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 sets out four factors that have been taken into account in applying the passive holding doctrine. One factor, with particular relevance here, is whether it is possible to envisage any plausible good faith use to which the Domain Name could be put. In the present case, there is none. Complainant’s Mark is so closely linked and associated with Complainant that Respondent’s use of Complainant’s Mark, or a relatively minor variation of it, strongly implies bad faith.

Complainant has therefore established the third ground under 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 Domain Name, <marlboro360.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: November 2, 2021