WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Andy McMillan

Case No. D2015-1887

1. The Parties

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

Respondent is Andy McMillan of Richmond, Virginia, United States.

2. The Domain Names and Registrar

The disputed domain names <marlborogreens.org>, <marlboromarijuana.net>, <marlboromarijuana.org> and <marlboromarijuanas.com> (hereinafter referred to as the "Disputed Domain Names") 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 October 22, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 24, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 25, 2015.

The Center appointed James H. Grossman as the sole panelist in this matter on December 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 is the United States tobacco division of Altria Group, Inc., a large multinational corporation, which is publicly traded in the United States under the symbol "MO". Complainant manufactures markets and sells a number of different cigarette brands in the United States, including cigarettes under the MARLBORO trademark. Complainant has been the registered owner of the MARLBORO trademark (Registration No. 68,502, showing a first use date of "0-0-1883") since April 14, 1908 and renewed most recently on March 21, 2008 as well as the MARLBORO and Red Roof Design trademark (Registration No. 938,510, showing a first use of "0-0-1954" and renewed most recently on July 25, 2012) since July 25, 1972 (hereinafter the two MARLBORO trademarks are sometimes referred to as the "Trademarks").

Complainant advised that it registered the domain name <marlboro.com> first on March 6, 2000. Complainant submitted that the latest update regarding the registration was filed on March 6, 2014. Complainant's domain name points to the Marlboro website of "www.marlboro.com" which provides information regarding Complainant's products, including special offers to adult smokers 21 years of age or older.

The Disputed Domain Names were all registered on July 16, 2015 and resolve to inactive websites.

5. Parties' Contentions

A. Complainant

Complainant advises it manufactures, markets, and sells cigarettes in the United States, including cigarettes under its "famous" Trademarks. According to Complainant, MARLBORO cigarettes have been made and sold by Complainant and its predecessor entities since 1883 with its modern history stemming from 1955. Thus, Complainant has been for many years using the Trademarks and variations thereof in connection with its tobacco and smoking-related products.

Complainant is the owner of the Trademarks referred to above under section 4 "Factual Background" and has spent substantial time, effort, and money advertising and promoting the Trademarks in the United States and has developed substantial goodwill in such Trademarks. The Trademarks are uniquely associated with Complainant, who points out that a number of UDRP panels have determined that the Trademarks are famous. For example, the panel in Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 stated "As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide …"

Complainant confirms it has the trademark rights referred to hereinabove as well as the domain name <marlboro.com> which allows access to its website at "www.marlboro.com".

For purposes of the substantive issues of this dispute, Complainant points out that prior UDRP panels have determined that a valid trademark establishes "sufficient prima facie proof of a 'right' under paragraph 4 (a)(i) of the Policy". Roust Trading Ltd. v. AMG LLC, WIPO Case No. D2007-1857.

Complainant states that it has long been recognized that consumers expect domain names incorporating a company's name or trademark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int'l L.P. v. Toeppen, 141 F.3d. 1316, 1326 (9th Cir. 1998). In this case all of the Disputed Domain Names incorporate the entire word "Marlboro". In a similar UDRP case where the complainant's entire Trademark was included in the domain names, to which were added some additional letters or words such as "black" ("marlboroblack"), the panel considered this structure confusingly similar to the complainant's mark. See Philip Morris USA INC. v. Pieropan, WIPO Case No. D2007-1614 (also recognizing the fame of the MARLBORO trademark).

Complainant notes that the terms "marijuana" or "marijuanas" or "greens" which are added to the MARLBORO Trademarks to complete the Disputed Domain Names specifically refer to marijuana or are known as referring to marijuana as in the case of "greens" and therefore falsely suggest that Complainant is either marketing or intends to market a marijuana cigarette which Complainant says is not the case and which would violate United States federal law and the laws of most states of the United States.

The addition of a generic Top-Level Domain ("gTLD") such as ".com", ".net", or ".org", according to Complainant has been held to be irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.

With regard to Respondent's rights or legitimate interests in the Disputed Domain Names, Complainant is quite clear that Respondent 1) has no connection or affiliation with Complainant; 2) was never known by a name or trade name that incorporates the word "Marlboro"; 3) has not received any license, authorization or consent, express or implied, to use the Trademarks in any manner; nor 4) is there any bona fide offering of goods or services or legitimate noncommercial or fair use of the Disputed Domain Names.

According to Complainant, Respondent is using the Trademarks to divert Internet users to the Disputed Domain Names' sites, capitalizing on the famous Marlboro name. A previous UDRP panel stated it was "inconceivable" for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks "given the longtime use of the Marlboro trademarks and strength of its brand." Philip Morris USA v. private, WIPO Case No. D2005-0790. According to Complainant, the Disputed Domain Names each resolve to a website bearing the message stating "website coming soon! Please check back soon to see if the site is available." The simple passive holding of the Disputed Domain Names without any actual message other than the "check back later" language on Respondent's website does not constitute a legitimate use of the Trademarks.

Similarly, this passive holding argument could be made with regard to the issue of bad faith. The MARLBORO trademark has been in use since 1883 and was registered in 1908. Earlier UDRP panels have ruled that, given the pre-existing fame of the Trademark, a respondent's unauthorized registration of a "Marlboro" domain name is evidence of bad faith. See e.g. Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264. Further, due to the fame of Complainant's Trademarks, several UDRP panels have determined that the respondent is deemed to have not just constructive knowledge, but actual knowledge of the Trademarks and of Complainant's rights upon registration of the disputed domain names. Complainant notes it has been held that failure to make an active use of the infringing domain name supports a finding of registration and use in bad faith. Finally, Complainant argues that the use by Respondent of "marijuana" and "marijuanas" and "greens" with the negative connotations described herein, together with use of the Trademarks, tarnishes Complainant's intellectual property rights and dilutes its value in the marketplace.

Based upon all of the above, Complainant requests a decision transferring the Disputed Domain Names to Complainant.

B. Respondent

As stated above in "Procedural History", section 3 above, Respondent failed to respond.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that each (and thus all) of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

Respondent has defaulted by failing to timely file a response to the allegations of Complainant. Paragraph 14(a) of the Rules states: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. Further, pursuant to paragraph 15(a), certain factual conclusions may be drawn on the basis of Complainant's undisputed representations."

Also, paragraph 14(b) of the Rules states: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate." When applying this provision, UDRP panels have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant. A number of cases hold for a non-responsive respondent where a complainant fails to prove all the elements of paragraph 4(a). Nevertheless, a panel may draw negative inferences from the respondent's default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413.

Previous UDRP panels stated that the panel is entitled to accept all reasonable allegations and inferences set forth in the complaint as true unless the evidence is clearly contradictory.

A. Identical or Confusingly Similar

The Panel has determined there is no doubt as to the international recognition of the Marlboro brand. Cases cited by Complainant make it clear that the Disputed Domain Names registered by Respondent in this case meet the test of confusing similarity with Complainant's Trademarks. The Panel has noted that Respondent registered the Disputed Domain Names on July 17, 2015, many years after the Trademarks were issued. In view of the long standing stature of the Trademarks, the Panel is of the view that Respondent's actions in filing were clearly an attempt to establish confusingly similar domain names, which would lead an Internet user to believe the Disputed Domain Names were tied to the Complainant' business.

The issue of confusing similarity is well considered by the panel in Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The panel in that case, which also involved a very well known trademark,

"concurs with the opinion of several prior WIPO UDRP panels, which have held that, when a domain name wholly incorporates a complainant's registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g. Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In the disputed domain name the PLAYBOY trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. See Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159."

Also, the addition of the suffix ".com" is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582."

Based on the evidence provided by Complainant as well as prior decisions of prior UDRP panels, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

The second element that Complainant needs to prove is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

Policy, paragraph 4(c).

Complainant has provided in detail, as set forth above, a clear picture of exactly the reasons Respondent has failed to meet any of the requirements of paragraph 4(a)(ii). Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names.

The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

The third element that Complainant must prove is that Respondent registered and is using the Disputed Domain Names in bad faith (Policy, paragraph 4(a)(iii)). The elements necessary for proof that the Disputed Domain Names have been registered and are being used in bad faith have been set forth in Complainant's contentions which the Panel has set out above in detail. In this case, the Trademarks were registered far earlier than the Disputed Domain Names' creation. The Panel has determined that there is no doubt as to the international recognition of the Trademarks. In view of the long standing stature of the Trademarks, the Panel considers Respondent's use of the Complainant's MARLBORO Trademarks, to which it simply added dictionary words, to be an attempt by Respondent to lead Internet users to believe that Respondent had some valid connection not only to the Trademarks but also to the Complainant.

The fact that the Disputed Domain Names all resolve to inactive website does not preclude a finding of bad faith (see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).

The Panel confirms that paragraph 4(a)(iii) of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that all of the Disputed Domain Names <marlboromarijuanas.com>, <marlboromarijuana.net>, <marlboromarijuana.org> and <marlborogreens.org> be transferred to Complainant.

James H. Grossman
Sole Panelist
Date: December 21, 2015