WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. David J. Perkins, Worldwide Domains

Case No. DPH2018-0003

1. The Parties

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

The Respondent is David J. Perkins, Worldwide Domains of Concord, California, United States.

2. The Domain Name and the dotPH Registrar

The disputed domain name <marlboro.com.ph> (the “Domain Name”) is registered with dotPH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2018. On July 19, 2018, the Center transmitted by email to dotPH a request for registrar verification in connection with the Domain Name. On July 24, 2018, dotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for dotPH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (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 August 6, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2018.

The Center appointed Michelle Brownlee as the sole panelist in this matter on September 11, 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 owns United States trademark registration numbers 68,502 (registered on April 14, 1908), 3,365,560, and 3,419,647 for the MARLBORO trademark in connection with cigarettes and other tobacco products in International Class 34.

The Domain Name was registered on or about September 15, 2017 and resolves to a parked page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its MARLBORO trademark, which the Complainant states is famous due to its extensive use and advertising in connection with tobacco products in the United States since 1883. The Complainant owns the domain names <marlboro.com> and <marlboro.net>. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith. The Complainant states that the Respondent is not affiliated with or authorized by the Complainant and is not commonly known by the Domain Name. The Complainant provided printouts of the web site associated with the Domain Name, which is a page that states that has no content except a statement that the Domain Name “may be for sale,” and a statement that any sponsored listings shown on the page are served up automatically and are not affiliated with the owner of the Domain Name. The Complainant argues that this use is not a bona fide use of the Domain Name. The Complainant suggests that because its mark enjoys a very high degree of fame, it is very likely that the Respondent was aware of the Complainant’s trademark when he registered the Domain Name, and argues that the Domain Name is used in bad faith even though there is no active content on the associated web site.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel refers to UDRP decisions where appropriate.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns rights in the MARLBORO trademark, and the second level of the Domain Name is identical to the trademark. Accordingly, the Complainant has proved this element.

B. Rights or Legitimate Interests

The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence that the Respondent is using the Domain Name in connection with a parked page that simply resolves to a page that does not have any content other than stating that the Domain Name may be for sale, and, therefore, does not appear to be actively using the Domain Name. The Respondent has not refuted those allegations. Accordingly, the Panel finds that the Complainant has established this element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(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 registration 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

This list of factors is not exhaustive. Other factors can indicate bad faith. The Complainant has presented evidence that the Respondent is not actively using the Domain Name in connection with a web site, and that the web site had a statement on it that the Domain Name may be for sale. The Complainant’s trademark is a well-known trademark in the United States, as numerous other UDRP panels have determined. See, e.g., Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263. It therefore seems likely that the Respondent knew of the Complainant’s trademark and registered the Domain Name either to sell to the Complainant, to divert Internet traffic, or for some other purpose that could be based on the confusion with the Complainant’s trademark, such as phishing. Since the Respondent did not offer any alternative explanation for its registration and use of the Domain Name, this Panel is unable to infer any good faith reason why the Respondent would have registered the Domain Name. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.

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.com.ph> be transferred to the Complainant.

Michelle Brownlee
Sole Panelist
Date: September 24, 2018