WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Irfan Khan
Case No. D2021-3226
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 Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Irfan Khan, Pakistan.
2. The Domain Names and Registrar
The disputed domain names <marlborocig.club>, <marlborogifts.club>, and <marlboromain.club> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 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 October 6, 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 October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2021.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 12, 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 Philip Morris USA Inc., the owner of several trademark registrations for the mark MARLBORO around the world, including the U.S. registration No. 0068502, granted on April 14, 1908; U.S. registration No. 4171817, granted on July 10, 2012; and U.S. registration No. 5379044, granted on January 16, 2018. The Complainant uses these marks in connection with several variations of cigarettes.
The Complainant also owns and operates the domain name <marlboro.com>, which was duly registered on March 6, 2000.
The disputed domain names were all registered on July 26, 2021, and the websites at the disputed domain names resolve to inactive pages.
5. Parties’ Contentions
The Complainant says that the MARLBORO trademark has become distinctive and are uniquely associated with its products, and that the disputed domain names are confusingly similar to its trademark since they reproduce it entirely, in addition to the generic terms “cig” (short for cigarettes), “gifts”, and “main”. According to the Complainant, the addition of such terms is not sufficient to overcome a finding of confusing similarity with its trademark.
The Complainant also mentions that the disputed domain name <marlborocig.club> adds at the end the term “cig”, a shorter definer for “cigarette”. Since such term is closely linked and associated with the Complainant, the confusion between the disputed domain name and the Complainant’s trademarks increases.
The Complainant alleges that it has not licensed or permitted the Respondent to use any of its trademarks or to register the disputed domain names and that it lacks any rights or legitimate interests in respect to the disputed domain names. Also, the Complainant informs that the Respondent is not commonly known by the disputed domain names and that it is identified as “Irfan Khan”, which does not resemble the disputed domain names in any manner.
According to the Complainant, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service to hide its true identity, which confirms its lack of legitimate interests.
The Complainant mentions that it is impossible that the Respondent was not aware of its famous trademark at the time of the registration of the disputed domain names, and that reproducing such a well-known mark in a domain name to attract Internet users to an inactive website cannot be considered as fair use or use in good faith.
Finally, the Complainant informs that the Respondent has previously been involved in other UDRP cases, which provides evidence of the pattern of cybersquatting in which the Respondent is engaging.
The Complainant then requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of several United States trademark registrations for MARLBORO, as well as of the domain name <marlboro.com>. The Complainant’s trademarks and domain name predate the disputed domain names.
The disputed domain names comprise the identical mark MARLBORO and end with the additional terms “cig”, “gifts”, and “main”. Indeed, the addition of these terms does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain names.
In this regard, it is the general view among prior UDRP panels that the addition of other terms to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Also, prior UDRP panels have recognized that the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that the domain name is confusingly similar to the complainant’s registered mark. See section 1.7, WIPO Overview 3.0.
The Panel finds therefore that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names; or that before any notice of the dispute, the Respondent has made use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or the Respondent has been commonly known by the disputed domain names.
The Panel finds that the use of the disputed domain names, which incorporate the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain names under the Policy. Moreover, the construction of the disputed domain names themselves is such to carry a risk of implied affiliation that cannot constitute fair use. See section 2.5.1, WIPO Overview 3.0.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The trademark MARLBORO is registered by the Complainant in different jurisdictions, in particular in the United States, as per the documents presented in the Complaint.
The disputed domain names are confusingly similar to the Complainant’s trademark and the Respondent has no association with and/or authorization of the Complainant.
The Complainant’s MARLBORO mark is extremely distinctive and well known around the world. This means that a domain name that comprises such a mark in its entirety is suggestive of the registrant’s bad faith. Here, the disputed domain names each comprise of the MARLBORO mark in its entirety. With respect to the disputed domain name <marlborocig.club>, the addition of “cig” can be seen as descriptive of the goods associated with Complainant’s mark. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4, WIPO Overview 3.0.
The disputed domain names resolve to inactive pages. When weighing the circumstances, prior UDRP panels have found that the non-use of a domain name would not necessarily prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
The Respondent also used a privacy WhoIs service to hide its identity, which confirms bad faith registration and use.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610: “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith.”
Therefore, this Panel finds that the Respondent has intentionally attempted to obtain some kind of commercial gain with the registration of the disputed domain names.
This Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain names have been registered and are being used in bad faith.
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 names <marlborocig.club>, <marlborogifts.club>, and <marlboromain.club> be transferred to the Complainant.
Mario Soerensen Garcia
Date: November 26, 2021