WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. and Altria Group, Inc. v. Christian Smith

Case No. D2014-2108

1. The Parties

The Complainants are Philip Morris USA Inc. (hereinafter referred to as “the First Complainant”) and Altria Group, Inc. (hereinafter referred to as “the Second Complainant”) of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Christian Smith of Falmouth, Cornwall, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <marlboroatomiser.com>, <marlboroecigliquid.com>, <marlboroflavorecig.com>, <marlbororedatomiser.com>, <marlbororedatomizer.com>, <marlbororedeliquid.com> and <thealtriaecig.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2014. On December 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an email communication by the Center requesting a confirmation, the Complainants filed an amendment to the Complaint and a request to consolidate on December 8, 2014.

The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 1, 2015. The Respondent submitted informal email communications to the Center on December 3, 8, and 10, 2014. However, no formal Response was filed.

In one of the Respondent’s communications, the Respondent offered to transfer the disputed domain name <altriaecig.com> to the Complainants without prejudice. The Complainants did not accept such offer.

The Center appointed Brigitte Joppich as the sole panelist in this matter on January 9, 2015. 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 First Complainant is a wholly-owned subsidiary of the Second Complainant, which in turn owns several other subsidiaries, including Nu Mark LLC, manufacturing and selling electronic cigarettes under the trademark MARKTEN.

The First Complainant is registered owner of numerous trademarks for MARLBORO, including United States trademark registration no. 68502 MARLBORO, registered on April 14, 1908 (hereinafter referred to as “the MARLBORO Mark”). The MARLBORO Mark has been determined to be famous worldwide by panels in previous UDRP proceedings (cf. Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735). The First Complainant maintains a website at “www.marlboro.com” with information on the First Complainant’s MARLBORO products.

The Second Complainant is registered owner of trademarks for ALTRIA, including United States trademark registration no. 3029629 ALTRIA (hereinafter referred to as “the ALTRIA Mark”). The ALTRIA Mark has been found to be known by panels in previous UDRP proceedings (cf. Altria Group, Inc. v. Abbaa Inc./ Domains by Proxy, Inc., WIPO Case No. D2011-0420; Altria Group, Inc. v. Steven Co., WIPO Case No. D2010-1762; Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764). The Second Complainant maintains a website at “www.altria.com” with information on its mission, its subsidiaries, and the subsidiaries’ brands.

The disputed domain names were all registered between November 6, 2014 and November 11, 2014. The disputed domain names <marlboroecigliquid.com>, <marlbororedatomiser.com>, <marlbororedatomizer.com>, <marlbororedeliquid.com>, and <thealtriaecig.com> resolve to inactive websites. The disputed domain name <marlboroflavorecig.com> resolves to a page that is parked with GoDaddy. The disputed domain name <marlboroatomiser.com> resolves to an active website that is headed “Marlboro Atomiser” and sells atomizers for use in connection with electronic cigarettes.

5. Parties’ Contentions

A. Complainants

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain names are confusingly similar to the Complainants’ well-known trademarks as they fully incorporate such trademarks, as the mere additions of the common abbreviations and generic terms “ecigliquid”, “red”, “flavorecig”, “atomizer” (or “atomiser”) “eliquid”, or some combination thereof does not distinguish the disputed domain names from the Complainants’ trademarks, and as the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

(2) The Respondent has no rights or legitimate interests in the disputed domain names as he has no connection or affiliation with the Complainants, or any of the many services or products provided by the Complainants under their marks, as he was never known by any name or trade name that incorporates the word “Altria” or “Marlboro”, as, to the Complainants’ information and belief, the Respondent has never sought or obtained any trademark registrations for “Altria” or “Marlboro” or any variation thereof, and as he has not received any license, authorization, or consent - express or implied - to use the Complainants’ trademarks in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain names, or at any other time since. The Complainants further state that the Respondent clearly chose to use the Complainants’ trademarks to divert Internet users from the Complainants’ websites by capitalizing on the public recognition of Complainants’ marks.

(3) The Complainants contend that the Respondent registered and is using the disputed domain names in bad faith. With regard to bad faith registration, the Complainants state that, given the fame of the MARLBORO Mark and the ALTRIA Mark, it is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainants’ rights. Furthermore, the Respondent is deemed to have constructive notice of the Complainants’ rights by virtue of their federal trademark and service mark registrations. Regarding the Respondent’s bad faith use, the Complainants state that registration and use of the disputed domain names create a form of initial interest confusion, which attracts Internet users to those domain names based on the use of the MARLBORO and ALTRIA Marks, which is further evidence that the disputed domain names infringe the Complainants’ trademarks. In addition, the Complainants state that the conclusion of bad faith is bolstered by the fact that five of the disputed domain names resolve to inactive websites. Finally, the Complainants argue that the Respondent must have expected that any use of the disputed domain names would cause harm to the Complainants as the disputed domain names are so obviously indicative of the products or services offered by the Complainants that the Respondent’s use of these domain names would inevitably lead to confusion of some sort.

B. Respondent

The Respondent did not file a formal response. However, in his email communications to the Center, the Respondent stated that trademarks are generally limited to certain products or services and that therefore the mere registration of the Complainants’ trademarks does not mean that the Complainants own the trademarked words or that nobody else can use them for other goods or services. The Respondent states that his products - and consequently the disputed domain names as well - do not infringe any trademark laws. Furthermore, the Respondent refers to the fact that anyone is allowed to use generic terms in a disruptive sense.

In his communication of December 10, 2014, the Respondent stated: “Yes the marlboro cigarette taste was in my mind but because of a trademark website my concentration was on the specific words ecig, atomizer. I never intended to sell cigarettes from any website, or pretend to be some other company”.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainants must prove that each of the following three elements is present:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(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. Consolidation of Proceedings

The Panel concludes that it is appropriate and efficient to permit the consolidation, particularly because the Complainants are a parent company and wholly-owned subsidiary and both have a common interest in the proceeding. Furthermore, the Respondent is the registrant of all of the disputed domain names and the Registrar is identical for all the disputed domain names (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.16 with further references).

B. Identical or Confusingly Similar

The disputed domain names fully incorporate the Complainants’ highly distinctive and well-known MARLBORO and ALTRIA Marks and are confusingly similar to such marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of additional generic terms, such as “atomizer”, “atomiser”, “ecig”, “liquid”, “flavor”, or “eliquid”.

Therefore, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainants have substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainants have fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not provide any evidence with regard to rights or legitimate interests in the disputed domain names.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.

<marlboroatomiser.com> and <marlboroflavorecig.com>

The disputed domain name <marlboroatomiser.com> resolves to an active website that is headed “Marlboro Atomiser” and sells atomizers for use in connection with electronic cigarettes. The disputed domain name <marlboroflavorecig.com> resolves to a page that is parked with GoDaddy. The Panel finds that neither the use of the well-known MARLBORO Mark in connection with products related to the Complainants’ core business nor the use in connection with a standard parking website provided by the Respondent’s registrar GoDaddy constitutes a bona fide offering of goods or services under the Policy.

<marlboroecigliquid.com>, <marlbororedatomiser.com>, <marlbororedatomizer.com>, <marlbororedeliquid.com>, and <thealtriaecig.com>

The aforementioned domain names resolve to inactive websites. The Respondent neither provided evidence with regard to the use, 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 nor any other evidence which may lead to a finding in favor of the Respondent’s rights or legitimate interests in such domain names. In particular, the Panel finds that such domain names are not comprised of generic terms.

Accordingly, the Panel finds that the Complainants have proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.

D. Registered and Used in Bad Faith

The Panel is satisfied that, based on the fame of the Complainants’ trademarks, the Respondent registered the disputed domain names with full knowledge of the Complainants’ MARLBORO and ALTRIA Marks. Such finding is supported by the fact that the Respondent itself stated that he had the Marlboro cigarette taste in mind and that he registered a cluster of domain names all related to the Respondents’ business.

<marlboroatomiser.com> and <marlboroflavorecig.com>

As to bad faith use with regard to the disputed domain names <marlboroatomiser.com> and <marlboroflavorecig.com>, by fully incorporating the MARLBORO Marks into the disputed domain names and by using such domain names in connection with a website offering supply for e-cigarettes and a GoDaddy parking website respectively, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainants’ website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.

<marlboroecigliquid.com>, <marlbororedatomiser.com>, <marlbororedatomizer.com>, <marlbororedeliquid.com>, and <thealtriaecig.com>

As the aforementioned disputed domain names are not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain names is to be considered as bad faith use under the Policy.

It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

The Panel is confident that, based on their longstanding use, the Complainants’ MARLBORO and ALTRIA Marks are well-established worldwide. Furthermore, the Respondent failed to provide evidence of any actual good faith use. In the view of the Panel, the Respondent’s contemplated use of the disputed domain names would in any case render the false impression that the disputed domain names are somehow related to the Complainants and their products. The Panel is therefore confident that the disputed domain names cannot be used by the Respondent in good faith. The facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain names by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain names have not yet been actively used, the Respondent’s non-use of the disputed domain names equals use in bad faith.

The Panel is therefore satisfied that the Respondent also used the disputed domain names in bad faith. Consequently, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and that the Complainants satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names <thealtriaecig.com>, <marlboroatomiser.com>, <marlboroecigliquid.com>, <marlboroflavorecig.com>, <marlbororedatomiser.com>, <marlbororedatomizer.com>, and <marlbororedeliquid.com> be transferred to the Complainants.

Brigitte Joppich
Sole Panelist
Date: January 23, 2015