WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Mauro Izquierdo

Case No. D2014-0435

1. The Parties

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

Respondent is Mauro Izquierdo of Miami, Florida, U.S.A.

2. The Domain Name and Registrar

The disputed domain name <marlborovaporcigs.com> 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 March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2014.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on April 28, 2014. 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 owns the famous MARLBORO trademark, registered April 14, 1908 in the U.S.A. under U.S. Trademark Registration No. 65,902, and used continuously for many years to market tobacco products.

The disputed domain name was registered June 9, 2013, and presently routes to a parking page with sponsored advertising links.¹

5. Parties’ Contentions

A. Complainant

Under the Policy, Complainant alleges that the disputed domain name is confusingly similar to its trademarks, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

Complainant seeks transfer.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Complainant must establish these elements even if Respondent does not submit a response to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.

UDRP panels generally disregard the generic Top-Level Domain (“gTLD”) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Without the gTLD suffix “.com”, the disputed domain name consists of the combination of Complainant’s famous MARLBORO trademark with the added words “vapor” and “cigs.” The Panel concludes that the addition of these descriptive terms does not negate the confusing similarity created by Respondent’s complete inclusion of the MARLBORO trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

In fact, the Panel finds that the addition of the term “cigs” to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).

The Panel therefore determines that the first element of paragraph 4(a) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once a prima facie showing is made, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Complainant contends that Respondent is taking advantage of consumer confusion by using Complainant’s trademark to attract Internet users to visit Respondent’s directory page. On information and belief, Complainant alleges that this generates commercial revenues for Respondent.

It is alleged that Respondent does not have rights or legitimate interests because Complainant has not authorized Respondent to use Complainant’s trademarks, Respondent is not commonly known by the disputed domain name, and, on information and belief, Respondent has no registrations for trademarks that include the “Marlboro” term. In the absence of any contrary allegations by Respondent, the Panel accepts as true these undisputed factual averments.

The Panel also agrees with Complainant that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. As appears online, Respondent’s website parking page displays links to third-party websites.² The diversion of traffic to third parties and their products demonstrates that Respondent is using the disputed domain name for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit... in consideration of directing traffic to that site”(citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)).See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.

In short, the Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that the use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.

Complainant has, therefore, established a prima facie case. Refraining from submitting a Response, Respondent has brought to the Panel’s attention no circumstances supporting the proposition that Respondent has rights or legitimate interests in use of the disputed domain name.

Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The Panel also concludes that the Complaint fulfills the third element of paragraph 4(a) of the Policy, bad faith registration and use, as elaborated below.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

It is clear to the Panel that Respondent knew of Complainant’s famous mark; the MARLBORO mark is fully included in the disputed domain name, which adds only the descriptive terms “vapor” and “cigs.”

Registration of a domain name based on a well-known or famous mark is commonly acknowledged to support a finding of bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“Bad faith may be found where a domain name is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Nintendo of America v. Marco Beijin, Bejen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070 (“the word 'POKÉMON' is obviously a well-known mark,” such that use “by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith”); Rediff.com India Ltd. v. Daniyal Waseem, WIPO Case No. D2010-0346 (“By incorporating wholly Complainant's REDIFF trademark long after the mark had attained fame, it is suggestive of bad faith on the part of the Respondent”).

By using the disputed domain name to display sponsored advertising links, Respondent is clearly using Complainant’s trademark without authorization for Respondent’s own commercial gain. Such conduct constitutes use in bad faith.

The Panel further finds that Respondent’s decision to refrain from submitting any response to the Complaint is cumulative evidence of bad faith.³

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 <marlborovaporcigs.com> be transferred to Complainant.

Jeffrey D. Steinhardt
Sole Panelist
Date: May 12, 2014

¹ The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition,paragraph 4.5. The appearance of the website online is generally consistent with its appearance in annexes to the Complaint, however, the annexes do not show the advertising links presently visible to the Panel on the website.

² Complainant also contends that the disputed domain name is used from time to time to display ads for coupons on smoking products and services to support quitting smoking. The Panel finds that there is no evidence in the record before it supporting this contention.

³ The Complaint also suggests that use of a disputed domain name which includes the term “vaporcigs” is bad faith use, since the disputed domain name’s reference to alternatives to Complainant’s trademarked products (tobacco cigarettes) would inevitably lead to consumer confusion. The Panel is unwilling to embrace such a sweeping assertion, particularly in light of the free speech and fair use policies underlying the UDRP and a significant body of panel decisions. In any case, it is unnecessary to rule definitively on this suggestion by Complaint, since the Panel concludes that the requirements of the third element of Policy, paragraph 4(a) are fulfilled on other grounds.