WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Onder Solak

Case No. D2016-2327

1. The Parties

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

The Respondent is Onder Solak of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <marlboro.ist> and <marlboro.istanbul> 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 November 15, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 17, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2016.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 19, 2016. 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 Complainant manufactures, markets, and sells cigarettes in the United States. It and its various predecessors have made and sold cigarettes under the MARLBORO trademark since 1883, with the modern history of the brand beginning in 1955.

The Complainant is the registered owner of the following trademark registrations in the United States (the “MARLBORO trademark”):

The Complainant has registered the domain name <marlboro.com>, which resolves to the Complainant’s official website for its MARLBORO products.

The disputed domain names were registered to the Respondent on September 28, 2016.

The disputed domain name <marlboro.ist> resolves to an inactive website stating “This site can’t be reached”. The disputed domain name <marlboro.istanbul> resolves to a website that contains malware.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has spent substantial time, effort, and money advertising and promoting the MARLBORO trademark throughout the United States, and has thus developed substantial goodwill in the MARLBORO trademark. Through such widespread, extensive efforts, the MARLBORO trademark has become distinctive and is uniquely associated with the Complainant and its products.

According to the Complainant, the disputed domain names are confusingly similar to the MARLBORO trademark. It has 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, and numerous panels have held that a domain name is confusingly similar to a trademark where the domain name incorporates the mark in its entirety. The addition of the geographic term “.ist” or “Istanbul” to the MARLBORO trademark fails to distinguish the disputed domain names from the trademark.

In the Complainant’s submission, the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant or with any of the products provided by the Complainant under the MARLBORO trademark. The Respondent is not known by any name or trade name that incorporates the word “Marlboro”, and has never sought or obtained any trademark registrations for “Marlboro”. The Respondent has not received any authorization to use the MARLBORO trademark in a domain name or in any other manner. The WhoIs records associated with the disputed domain names do not identify the Respondent by them. The Complainant also notes that, before any notice to the Respondent of this dispute, there is no evidence of the Respondent’s use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain, as the disputed domain name <marlboro.ist> points to an inactive website and the disputed domain name <marlboro.istanbul> points to a website containing malware.

According to the Complainant, the Respondent chose to use the MARLBORO trademark to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the trademark. Traders would not legitimately choose a distinctive trademark of a third party unless seeking to create an impression of an association with it. The failure to use a domain name, including the pointing of that domain name to an inactive website, does not establish rights or legitimate interests in the domain name. The disputed domain name <marlboro.istanbul> points to a website containing malware, which also shows that the Respondent lacks any rights or legitimate interests in that disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. The Respondent has registered the disputed domain names in bad faith by doing so with full knowledge of the Complainant’s rights in the MARLBORO trademark, which greatly predate the Respondent’s registration of the disputed domain names. This is apparent from the relative timing of the use and registration of the MARLBORO trademark versus the registration of the disputed domain names. The MARLBORO trademark has been in use since 1883 and was registered in the United States in 1908, whereas the disputed domain names were registered more than a century later, on September 28, 2016. A simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO trademark as source identifiers for its tobacco products. The Complainant’s rights in the MARLBORO trademark would also have been obvious through basic domain name and trademark searches of records that are readily accessible online. The Respondent’s usage of the MARLBORO trademark to divert Internet users from the Complainant’s true website demonstrates bad faith use under the Policy. This conclusion of bad faith is supported by the fact that the disputed domain name <marlboro.ist> currently resolves to an inactive website. The Respondent may act in bad faith where, as here, the disputed domain name <marlboro.ist> points to an inactive website and other indicia of bad faith are present, such as the Complainant having a famous trademark. Likewise, the Respondent’s use of the disputed domain name <marlboro.istanbul> to point to a website containing malware constitutes bad faith use.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are 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 names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

In this case, the Center has employed the required measures to achieve notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. The Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s failure to submit a response entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the MARLBORO trademark.

Each of the disputed domain names contains the element “marlboro” as its second level domain. This element is identical to the Complainant’s well known MARLBORO trademark. The combination of this element with the “.ist” and the “.istanbul” gTLD parts of the disputed domain names is likely to make them appear to Internet users as representing online locations related to the offering of the Complainant’s MARLBORO products in the city of Istanbul, Turkey.

Therefore, the Panel finds that each of the disputed domain names is confusingly similar to the MARLBORO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known by the MARLBORO trademark and has not been authorized by the Complainant to use it; that the Respondent has knowingly registered the disputed domain names consisting exclusively of the MARLBORO trademark to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the MARLBORO trademark, and has not carried out a bona fide activity through the disputed domain names, as the disputed domain name <marlboro.ist> points to an inactive website and the disputed domain name <marlboro.istanbul> points to a website containing malware. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

There is no evidence in the available record that the Respondent is commonly known by the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.

The disputed domain names incorporate the well-known MARLBORO trademark of the Complainant. The Respondent has linked the disputed domain name <marlboro.ist> to an inactive website and the disputed domain name <marlboro.istanbul> to a website containing malware. Given the worldwide use of the MARLBORO trademark by the Complainant for more than a century, it appears likely to the Panel that the Respondent must have been aware of the MARLBORO trademark when it registered the disputed domain names, and that it chose to target this trademark because of the likelihood that it will attract traffic to the disputed domain names. The lack of active use of the disputed domain name <marlboro.ist> does not support a finding of rights and legitimate interests of the Respondent in that disputed domain name, and the association of the disputed domain name <marlboro.istanbul> to a website containing malware supports a finding of lack of rights and or legitimate interests of the Respondent in that disputed domain name.

Taking all the above into account, the Panel finds that the Complainant’s prima facie case has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain names fully incorporate the MARLBORO trademark and are confusingly similar to it, and the Respondent is likely to have registered them targeting the well-known MARLBORO trademark and in an attempt to attract traffic to the disputed domain names. In the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that this conduct of the Respondent represents a bad faith registration of the disputed domain names.

The Respondent’s website at the disputed domain name <marlboro.ist> points to an inactive website. As discussed in paragraph 3.2 of the WIPO Overview 2.0, the apparent lack of active use of a 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. All these circumstances are present here. The MARLBORO trademark is well-known all over the world, the Respondent has filed no Response, and its contact details provided for the registration of the disputed domain names are wrong, as evident from the failed attempts of the courier service to deliver documents to the Respondent for the present proceeding. Therefore, the Panel finds that the disputed domain name <marlboro.ist> was registered and is being used in bad faith.

The disputed domain name <marlboro.istanbul> points to a website containing malware. The distribution of malware is aimed at causing harm to consumers and may tarnish the goodwill of the Complainant. In view of this, and in the absence of any rebuttal by the Respondent, the Panel is prepared to accept that the Respondent has registered and used the disputed domain name <marlboro.istanbul> in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used 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 names <marlboro.ist> and <marlboro.istanbul> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 19, 2017