WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Brands Sàrl v. AliReza Hosseini
Case No. DIR2018-0006
1. The Parties
The Complainant is Philip Morris Brands Sàrl of Neuchâtel, Switzerland, represented Saba & Co. IP, Lebanon.
The Respondent is AliReza Hosseini of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <marlboroshop.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2018. On February 6, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 7, 2018, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 14, 2018.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2018. On March 9, 2018, the Center notified the Respondent's default.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 19, 2018. 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's trademark, currently one of the best-selling cigarette brands in the world, has been in use since 1924 and is present today in more than 180 countries.
The Complainant is the owner, amongst several others, of the following trademark registration:
- Islamic Republic of Iran Trademark Registration No. 13870 for MARLBORO registered on May 4, 1955, successively renewed.
The disputed domain name <marlboroshop.ir> was registered on December 6, 2017. Currently it is used in connection with a website operating as an online cigarette store which depicts both the Complainant's competitors' products as well as the Complainant's products.
5. Parties' Contentions
The Complainant asserts that its MARLBORO trademark, originally introduced in 1924 in connection with cigarettes, is today one of the world's most valuable trademarks, internationally advertised and worldwide reputed.
The Complainant further asserts that the disputed domain name is confusingly similar to its famous mark since it incorporates entirely the MARLBORO trademark with the mere addition of the dictionary word "shop" which is insufficient to add any distinctiveness thereto.
As to the absence of rights or legitimate interests in the disputed domain name, the Complainant argues that the Respondent:
(i) has not been commonly known by the disputed domain name;
(ii) was never an authorized distributor or manufacturer of the Complainant's products, nor there has ever been any business relationship between the Respondent and the Complainant. The Complainant has not sponsored or endorsed the Respondent's activities in any aspect and has not consented to the Respondent's use and exploitation of the MARLBORO trademark in connection with the disputed domain name;
(iii) has been using the disputed domain name in connection with a website that promotes and sells competing products, what does not characterize a bona fide offering of goods or services.
The registration and use of the disputed domain name in bad faith arises from the Respondent's use of the disputed domain name who intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known trademark. Therefore, according to the Complainant, the Respondent is redirecting Internet users to the Respondent's website in which competing products are promoted and sold, thus benefiting from an undue association with the Complainant's reputation and notoriety for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of the Respondent's website. Lastly, another element that indicates the Respondent's bad faith is the reproduction of pictures of the Complainant's products which show that the Respondent was evidently aware of the Complainant's trademark when registering the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the MARLBORO trademark.
The disputed domain name includes the Complainant's trademark in its entirety. In this case, the ".ir" country code Top-Level Domain is not to be taken into account as already established in case law under the Policy and the addition of the generic term "shop" is insufficient to add any distinctiveness thereto.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent's rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
In that sense, the Complainant states that the Respondent is not an authorized distributor or manufacturer of the Complainant's products and there has never been any business relationship between the Respondent and the Complainant; not having the Complainant sponsored or endorsed the Respondent's activities in any aspect.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent's use of the disputed domain name in connection with an online cigarettes store, in direct competition to the Complainant's notable products cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant's consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered or Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent's webpage which operate as an online store, in direct competition with the Complainant.
The Respondent's use of the disputed domain name not only clearly indicates full knowledge of the Complainant's trademark but also an attempt of misleadingly diverting consumers for the Respondent's own commercial gain.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name.
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 <marlboroshop.ir> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: March 29, 2018