WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Daniel Iannotte

Case No. D2015-0381

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America; represented by Arnold & Porter, United States of America.

The Respondent is Daniel Iannotte of Truckee California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <marlboroclones.com> (hereinafter: the Disputed Domain Name) 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 4, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2015, 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.

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 the Respondent of the Complaint, and the proceedings commenced on March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2015.

The Center appointed Neil J. Wilkof as the sole panelist in this matter on April 22, 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 the Rules, paragraph 7.

4. Factual Background

The Disputed Domain Name, <marlboroclones.com>, was registered on June 27, 2014.

The Complainant inter alia has the following trademark registrations:

United States Registration No. 68,502 for the mark MARLBORO for cigarettes, in international class 17, registered on April 14, 1908;

United States Registration No. 938,510 for the mark MARLBOROFILTERCIGARETTES and design for cigarettes, in international class 17, registered on July 25, 1972.

5. Parties’ Contentions

A. Complainant

The Complainant is engaged in the manufacture, marketing and sale of tobacco and smoking-related products in the United States under the MARLBORO mark and brand (hereinafter: MARLBORO or the Mark). Cigarettes have been manufactured, marketed and sold by the Complainant (or by various predecessor entities) under the Mark, and variations thereof, since 1883. The modern history of the MARLBORO brand reaches back to 1955.

The Complainant has devoted significant resources with respect to promoting and advertising the Mark and the Mark has acquired extensive goodwill with respect to cigarette products. Previous UDRP panels have found that MARLBORO is a famous mark.

The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent has intentionally chosen a domain name based on the famous MARLBORO mark. The Disputed Domain Name resolves to an inactive website that reads “Website Coming Soon.” To the contrary, the Complainant has registered the domain name <Marlboro.com>, which resolves to the Complainant’s website, “www.marlboro.com”. This website provides access to information regarding various products of the Complainant, including special offers to smokers 21 years old or above.

B. Respondent

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

6. Discussion and Findings

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

According to paragraph 4(a) of the Policy, the Complaint must prove the following:

(i) The Disputed 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 the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well-established that “a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP” (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). Here, the Disputed Domain Name wholly incorporates the Complainant’s MARLBORO mark. Confusing similarity between the Disputed Domain Name and the Mark is further evidenced by the fact that the first part of the Disputed Domain Name consists solely of the Mark. It is recognized that a person encountering a name or mark is likely to give greater attention to the first part thereof. Here, as stated, the first part of the Disputed Domain Name is identical to the MARLBORO mark.

The addition of the word “clone” as part of the Disputed Domain Name is not to the contrary. The word “clone” is defined by “oxforddictionaries.com” as “a person or thing regarded as an exact copy of another”, i.e., it connotes a characteristic of such person or thing. As such, the word, as part of the Disputed Domain Name, gives the misimpression that it is in some way connected to the Complainant’s products. In so doing, the presence of the word “clone” only serves to exacerbate the confusion between the name and the Disputed Domain Name, see Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1874, ruling that the domain name <ikea.buzz> is confusingly similar to the mark IKEA (“…to the extent “.buzz” denotes news and information about “Ikea” this would exacerbate confusion.”)

The addition of the generic Top-Level Domian (“gTLD”) suffix in this case “.com” has long been held to be bereft of any distinctive power in determining whether a mark is confusingly similar to a disputed domain name. As stated by the panel in Sony Kabuskuki Kaisha (also trading as Sony Corporation), WIPO Case No. D2000-1409, “neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. Having regard to the MARLBORO mark, the same applies to the instant situation.

Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Mark.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof. The Respondent’s name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark or the Disputed Domain Name. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark or that the Respondent has ever been authorized to serve as a franchisee of the Complainant.

Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.

Based on the foregoing, the Panel rules that the Respondent has no right or legitimate interest in the Mark.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent, as follows:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

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

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product or service on the respondent’s web site or location.

Under the circumstances, the Respondent’s selection of the Mark supports the conclusion that the Respondent has acted in bad faith. The Respondent registered the Disputed Domain Name only in 2014, more than a century, after the Complainant first began to use and register the Mark. Previous UDRP panels have found MARLBORO to be a famous mark. See, e.g., Philip Morris USA Inc. v. Pieropan, WIPO Case No. 2014-1270 (“finding that the Trademark [MARLBORO®] is a well-known trademark worldwide as held by many other panels”). Moreover, it is “inconceivable” that the Respondent “was not aware of the MARLBORO® trademarks” given its fame and reputation and its long-time use in the marketplace. Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609. As stated by the panel in the case of The American Automobile Association Inc. v. Sompop Padungkijjaroen, WIPO Case No. D2012-2168, “[g]iven the distinctive nature of the Complainant’s AAA Marks and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant.” These words apply equally in the instant situation.

The Complainant states that at the time of the filing of the Complaint, the website was still “under construction.” Inspection of the website associated with the Disputed Domain Names indicates that this is still the situation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2, discusses the question, “Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?’ The response in pertinent part is as follows:

“Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

Applying this view, the Panel finds that, under the circumstances, the Respondent has acted in bad faith, despite the absence of active use. In particular, attention is drawn to the fact MARLBORO is well-known and that no response was filed to the Complaint.

Based on all of the foregoing, the Panel rules that the Respondent has registered and is using the Disputed Domain Name in bad faith.

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 <marlboroclones.com> be transferred to the Complainant.

Neil J. Wilkof
Sole Panelist
Date: April 29, 2015