WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Contact Privacy Inc. Customer 0132990860 / Donell Dickson

Case No. D2013-1373

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States” or “U.S.”), represented by Arnold & Porter LLP, United States.

The Respondent is Contact Privacy Inc. (“Contact Privacy”) Customer 0132990860 of Toronto, Canada / Donell Dickson of Upper Marlboro, Maryland, United States.

2. The Domain Name and Registrar

The disputed domain name <marlborogreenoffers.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2013. On that same day, the Center sent an email to the Registrar in which it requested registrar verification in connection with the disputed domain name. Also on that same day, the Registrar responded to the Center in an email in which it disclosed registrant and contact information for the disputed domain name that differed from the respondent and contact information that the Complainant had provided in the Complaint. In an email sent on August 12, 2013, the Center provided the Complainant with registrant and contact information disclosed by the Registrar, and it invited the Complainant to submit an amendment to the Complaint. On August 16, 2013, the Complainant filed an amended Complaint. The Center subsequently verified that both the original and amended versions of 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”).

The proceedings commenced on August 22, 2013, with the Center having formally notified the Respondent of the Complaint in accordance with paragraphs 2(a) and 4(a) of the Rules. The Respondent did not submit any response to the Complaint by September 11, 2013, which was the due date for a response according to paragraph 5(a) of the Rules. On September 12, 2013, the Center notified the Respondent of its default. On September 18, 2013, the Center received an informal email communication from the Respondent. Receipt of this email was acknowledged on September 20, 2013 by the Center.

The Center appointed D. Brian King as the sole panelist in this matter on October 9, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a company in the business of manufacturing, marketing and selling cigarettes, including cigarettes under its MARLBORO trademarks. Amended Complaint, paragraph 13. Information on the Complainant’s products can be found on the Complainant’s website “www.marlboro.com,” which is hosted at the domain name <marlboro.com>. Amended Complaint, paragraph 18 and Annex D. Cigarettes bearing MARLBORO trademarks have been made and sold by the Complainant and predecessor entities since 1883. Amended Complaint, paragraph 13. A number of UDRP panels have considered the Complainant’s MARLBORO trademarks and have acknowledged that they are well-known trademarks. See Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 (“the Panel has no hesitation in finding that the [MARLBORO] Trademark is a well-known trademark worldwide as held by many other panels”); Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (“Panels have previously determined that the MARLBORO trademarks are widely-known in the United States of America and, indeed, internationally.”).

The Complainant bases its Complaint on its ownership of two MARLBORO trademarks (together, the “MARLBORO Trademarks”), both of which are registered in the United States and are accessible in the U.S. Principal Register. The first trademark, a MARLBORO word mark, was registered on April 14, 1908, with respect to cigarettes and has the registration number 68,502. Amended Complaint, paragraph 14 and Annex C. The second trademark, the MARLBORO and Red Roof Design mark, was registered on July 25, 1972, with respect to cigarettes and has the registration number 938,510. Amended Complaint, paragraph 14 and Annex C. The word “Marlboro” features prominently in both of the MARLBORO Trademarks.

Little is known about the Respondent. The Respondent’s identity as the registrant of the disputed domain name was initially masked in the WhoIs database through Contact Privacy, a privacy service provided by the Registrar. Amended Complaint, paragraphs 6-8 and Annex A. The Respondent was denoted by Contact Privacy as Customer 0132990860. The Complainant sent a letter to Contact Privacy on March 4, 2013, in which it asked for the unmasking of the identity of the registrant of the disputed domain name and explained the alleged violation of its trademark rights. Amended Complaint, paragraph 21 and Annex F. The letter was forwarded to the Respondent, who did not respond. Complaint, paragraphs 22 and 24 and Annex G. The Respondent also did not reply to the Complainant’s request for the transfer of the disputed domain name that was sent on April 17, 2013, via a form on the Contact Privacy website, which the Registrar had said would allow the Complainant to contact directly the true registrant of the disputed domain name. Amended Complaint, paragraphs 22-24 and Annexes G and H. After the initial filing of the Complaint, the Registrar and the Center identified the Respondent as being the registrant of the disputed domain name. Amended Complaint, paragraph 9 and Annex J.

The disputed domain name presently resolves to a page entitled “Default Website Page” that essentially contains nothing other than an invitation to contact the website owner. Amended Complaint, paragraph 25 and Annex I. At the time that the Complainant discovered the disputed domain name, it resolved to the website “www.marlborogreenoffers.com”, which purported to offer free trials of third-party products to those who agreed to join a “tree club.” Amended Complaint, paragraph 20 and Annex E.

5. Parties’ Contentions

A. Complainant

The Complainant makes three main contentions that correspond to the three limbs of paragraph 4(a) of the Policy, which must be established for relief to be ordered.

The first main contention by the Complainant is that the disputed domain name is confusingly similar to trademarks in which it has rights. In support of this contention, the Complainant makes the preliminary point that its registration of the MARLBORO Trademarks suffices to establish that it has rights in these marks. See Amended Complaint, paragraph 27, citing, inter alia, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. Next, the Complainant argues that confusing similarity to the MARLBORO Trademarks exists, as the disputed domain name incorporates these trademarks in their entirety. See Amended Complaint, paragraphs 28-29, citing, inter alia, Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 and Philip Morris USA Inc. v. John Doe, NAF Claim No. 1436198. The inclusion of words such as “green” and “offers”, the Complainant asserts, is insufficient to prevent a finding of confusing similarity. See Amended Complaint, paragraph 30, citing, inter alia, America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 and Philip Morris USA Inc. v. Deep Nuke t/a Lagnit Bali, WIPO Case No. D2012-1037. For similar reasons, the presence of the generic top-level domain suffix “.com” is irrelevant. See Amended Complaint, paragraph 31, citing UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416 and Aous Uweyda v. Abdallah Sheet, NAF Claim No. 165119. Finally, the Complainant adds that the disputed domain name generates initial interest confusion for Internet users seeking information on the Complainant’s products. See Amended Complaint, paras 32-33, citing, inter alia, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 and Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166.

The second main contention by the Complainant is that the Respondent has no rights or legitimate interests in the disputed domain name. In support of this contention, the Complainant points out that the Respondent has no connection or affiliation with the Complainant, associated entities of the Complainant, or any products of the Complainant sold under the MARLBORO Trademarks. See Amended Complaint, paragraph 34. In addition, the Respondent has never been known by any name or trade name incorporating the word “Marlboro,” has never sought or obtained a trademark based on the word “Marlboro,” and has never received any express or implied permission to use the MARLBORO Trademarks in a domain name or in any other manner. See Amended Complaint, paragraph 34. The Complainant further contends that the Respondent deliberately chose the disputed domain name to draw Internet users to his website, by trading on the Complainant’s goodwill. See Amended Complaint, paragraph 35, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790.

The third main contention by the Complainant is that the Respondent registered and is using the disputed domain name in bad faith. As to registration of the disputed domain name, the Complainant argues that bad faith is present because the Respondent registered the disputed domain name with knowledge of the Complainant’s rights in the MARLBORO Trademarks. See Amended Complaint, paragraph 37, citing GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826. Given the fame of the MARLBORO Trademarks, the Respondent must have been aware of the Complainant’s rights. In the alternative, the Respondent ought to be deemed to have constructive notice of the Complainant’s rights. See Amended Complaint, paragraphs 38-39, citing, inter alia, Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 and America Online, Inc. v. aolgirlsgonewild.com, NAF Claim No. 117319. On usage of the disputed domain name, the Complainant argues that the presence of bad faith is clear from the Respondent’s misuse of the disputed domain name to mislead and divert Internet users to his website; the present inactivity of the Respondent’s website; and the awareness that the Respondent must have had that harm would be suffered by the Complainant due to the disputed domain name being clearly indicative of the Complainant’s products. See Amended Complaint, paragraphs 42, 44 and 45, citing Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742, Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276, and Kraft Foods, Inc. v. Nowon Uknow, WIPO Case No. D2005-1153. The Complainant adds that the Respondent’s failure to answer the March 4, 2013 letter and the April 17, 2013 communication, as well as his attempt to conceal his identity, are consistent with bad faith registration and use of the disputed domain name. See Amended Complaint, paragraphs 40-41 and 43, citing Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 and Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

B. Respondent

The Respondent, as noted above, did not reply to the Complainant’s contentions in the Complaint. The only communication that was received from the Respondent was his informal email to the Center dated September 18, 2013. The totality of that email states as follows: “trying to cancel the website an [sic] domain name ; what else can i [sic] do.” Pursuant to paragraph 5(e) of the Rules, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.” There being no evidence supporting a finding of any such exceptional circumstances in this case, the Panel shall decide the dispute on the basis of the Complaint alone.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove each of the following elements in order to obtain relief:

(i) the domain name is 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 domain name; and

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

A complainant bears the burden of proving each of these elements.

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, being the MARLBORO Trademarks. The proof of registration of the MARLBORO Trademarks, in itself, suffices to establish that the Complainant has cognizable rights arising out of them. See Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857 (“the fact of registration provides sufficient prima facie proof of a ‘right’ under paragraph 4(a)(i) of the Policy”).

The disputed domain name incorporates the Complainant’s MARLBORO Trademarks. Such incorporation creates a confusing similarity that is not ameliorated by the addition of the words “green” and “offers” or the generic top-level domain suffix “.com.” There is no reason, in the present circumstances, to depart from the norm established in past UDRP cases that the incorporation of a well-known trademark into a domain name will be sufficient to establish confusing similarity. See America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (“[p]recedent clearly supports the principle that the adaptation of a recognized trademark in a Domain Name by variation in spelling or by the deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity”); see also Aous Uweyda v. Abdallah Sheet, NAF Claim No. 165119 (“addition of the top level domain “.com” is irrelevant in determining whether a domain name is identical to a mark”); Philip Morris USA Inc. v. John Doe, NAF Claim No. 1436198 (presence of the word “green” in a domain name incorporating the MARLBORO mark insufficient to prevent a finding of confusing similarity).

B. Rights or Legitimate Interests

The Panel is likewise persuaded that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has sufficiently established the Respondent’s lack of any relationship with the Complainant, its products or the MARLBORO Trademarks. These facts are enough to demonstrate, prima facie, the Respondent’s lack of rights or legitimate interests in the disputed domain name. See CIMB Group Sdn. Bhd. & CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2010-1680 (“What has been established in earlier UDRP panel decisions is that whilst a general burden of proof is on a complainant in a UDRP proceeding to establish each of the requirements of paragraph 4(a) of the Policy, in relation to this requirement under paragraph 4(a)(ii), all that is reasonably required of the complainant is to establish prima facie evidence of a respondent’s lack of rights or legitimate interests in a disputed domain name.”). The burden therefore shifts to the Respondent to produce sufficient evidence of the existence of rights or legitimate interests.

Nothing in the material before the Panel justifies a finding that the Respondent has discharged that burden. The Respondent’s failure to answer the Complaint in itself is suggestive of a lack of rights or legitimate interests in the disputed domain name. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 (“the fact that Respondent did not avail itself of its right to respond to the Complaint further indicates that Respondent has no rights or legitimate interests in the disputed domain name”). Beyond that, the Respondent has made no attempt whatsoever to establish, or even claim, rights or legitimate interests in the disputed domain name. On the contrary, in his only communication – emailed to the Center on September 18, 2013 – he appears to accept the contrary. Accordingly, the Panel finds the second element to be established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that a 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 the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) a respondent has 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) a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location, or of a product or service on the website or location.

On the basis of the evidence presented, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith. First, in the absence of any alternative explanation from the Respondent, the most plausible reason for the registration and use of the disputed domain name is that the Respondent hoped to divert Internet users to his website for commercial gain by creating a likelihood of confusion with the globally prominent MARLBORO Trademarks as to the source, sponsorship, affiliation or endorsement of his website. In itself, this may justify a finding of bad faith. See paragraph 4(b)(iv) of the Policy. Second, the Respondent was likely on actual notice, and in any event on constructive notice, of the Complainant’s rights in the MARLBORO Trademarks at the time of his registration and use of the disputed domain name. The fame of the MARLBORO Trademarks is such that it would be highly improbable for the Respondent, or indeed anyone domiciled in the United States, to be unaware of them. See Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding it “inconceivable [that] the Respondent was not aware of the MARLBORO trademarks”). Third, the Respondent’s website, which was active when the Complainant first learned of its existence, has now become inactive, which – and again in the absence of contrary evidence – indicates the absence of a bona fide use. Compare Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (“Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name.”). Fourth, the Respondent has spurned all opportunities to demonstrate that he had registered and is using the disputed domain name in good faith. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 (finding the failure to reply to a cease-and-desist letter to be an indication of bad faith).

In short, nothing in the material before the Panel augurs for any conclusion other than that the Respondent registered and is using the disputed domain name in bad faith. The only communication from the Respondent would, if anything, appear to be an admission of his lack of good faith in registering and using the disputed domain name.

Finally, and for the sake of completeness, the Panel notes that the Respondent’s purported address in Marlboro, Maryland, is insufficient to suggest any good faith basis for registering or using the disputed domain name.

On all of these grounds, the Panel finds that the third element is sufficiently established.

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 disputed domain name <marlborogreenoffers.com> be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: October 23, 2013