WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. J & S autorepair / Steven Scully

Case No. D2015-0930

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States" or "US"), represented by Arnold & Porter, United States.

Respondent is J & S autorepair / Steven Scully of Charlevoix, Michigan, United States.

2. The Domain Name and Registrar

The disputed domain name <iheartmarlboro.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 June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2015, 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 June 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2015. Respondent submitted an email communication to the Center on June 5, 2015, requesting a stay of the proceedings for 90 days, but did not submit any other response. The Center acknowledged receipt of Respondent's communication and confirmed that the Response deadline was June 25, 2015, as the Rules do not provide for any delay of proceedings or suspension except to enable settlement discussions. The Center notified Respondent's default on June 26, 2015.

The Center appointed Dina Leytes as the sole panelist in this matter on July 7, 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

Complainant manufactures, markets and sells cigarettes. Complainant and its predecessor entities have made and sold cigarettes since 1883. Complainant is the owner of several registered trademarks that incorporate the term "Marlboro" (the "MARLBORO Marks"), including US Registration No. 68,502, which was registered on April 14, 1908, for cigarettes, and US Registration No. 938,510, which was registered on July 25, 1972, for cigarettes. Complainant has also registered the domain name <marlboro.com>, which resolves to Complainant's US website and provides information about Complainant's products to age-verified adults 21 years of age or older.

According to the registration information provided by the Registrar, the disputed domain name <iheartmarlboro.com> was registered on March 14, 2015. It is currently inactive, resolving to a page with the wording: "Website Coming Soon! Please check back soon to see if the site is available."

Respondent appears to be an individual or entity located in the United States.

5. Parties' Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to the MARLBORO Marks in which Complainant has rights. Consumers expect a domain name incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner. Further, numerous panels have held that a domain name is confusingly similar to a trademark where it incorporates the mark in its entirety. Finally, the addition of a generic Top Level Domain ("gTLD") such as ".com" is not relevant when considered confusing similarity.

Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name because Respondent is not affiliated with the MARLBORO Marks, is not known by the MARLBORO Marks, and on information and belief has never sought or obtained trademark rights in "Marlboro" or any variation thereof. Nor has Respondent received any license, authorization or consent to use the MARLBORO Marks in any manner from Complainant. Respondent chose the disputed domain name <iheartmarlboro.com> to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO Marks. Complainant also cites to several panel decisions that held that pointing a domain name to an inactive website does not constitute a legitimate use of a domain name. See, e.g., Société nationale des télécommunications: Tunisie Telecom v. Isamel Leviste, WIPO Case No. D2009-1529 (noting that passive holding of a disputed domain name "does not constitute a legitimate use of such a domain name" that would give rise to a legitimate right or interest in the name).

Complainant also alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant cites to a list of cases where prior panels determined that a registrant registered a domain name incorporating the Marlboro Marks in bad faith based on the renown or fame of Complainant's marks. See, e.g., Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264 ("Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant's MARLBORO Trademarks significantly pre-date Respondent's registration of the Domain Name and in light of the long-established and widespread use and the protection of the MARLBORO Trademarks that Respondent knew or ought to have known of Complainant's prior rights"); and Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was "inconceivable" that the respondent "was not aware of MARLBORO Marks"). Complainant further alleges that even if Respondent registered the disputed domain name to suggest an affinity with MARLBORO brand products, this would not justify including Complainant's mark in the disputed domain name, and that Respondent's method of infringement will divert Internet users from Complainant's US website and that this demonstrates Complainant's bad faith use.

B. Respondent

The Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant must prove that:

(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 respect of the disputed domain name; and

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

The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at paragraph 4.6 and the cases cited therein.

A. Identical or Confusingly Similar

The Panel finds that Complainant has registered trademark rights in the well-known MARLBORO Marks. The Panel further finds that the disputed domain name is confusingly similar to Complainant's MARLBORO Marks. The disputed domain name incorporates Complainant's MARLBORO trademark in its entirety. The addition of the wording "I heart" does not change the analysis as the addition of generic words to a well-known trademark does not serve to sufficiently distinguish the disputed domain name from the Complainant's mark. Nor is the gTLD ".com" typically considered in evaluating confusing similarity as it is a technical requirement of the domain name system.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant.

B. Rights or Legitimate Interests

To prevail on this element, Complainant must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent's rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Based on the record before the Panel, Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not affiliated with Complainant, is not known by the MARLBORO Marks, and has not sought or obtained trademark rights in "Marlboro" or any variation thereof. Nor has Respondent received any license, authorization or consent to use the Marlboro Marks in any manner from Complainant. Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. By failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may be used to show evidence of a respondent's bad faith registration and use:

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

(ii) 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 respondent has engaged in a pattern of such conduct; or

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

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

The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. The Panel finds that Respondent was aware of Complainant and the MARLBORO Marks when it registered the disputed domain name. The Panel also finds that Respondent is using the disputed domain name to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO Marks and that this constitutes bad faith use under the Policy.

As previous UDRP panels have held, the fact that a domain name is inactive does not prevent a finding of bad faith registration and use. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Indeed, in the case of well-known trademark such as MARLBORO, the incorporation of such a trademark "into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith." See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant.

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 <iheartmarlboro.com> be transferred to Complainant.

Dina Leytes
Sole Panelist
Date: July 21, 2015