WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domain Admin / Whois Privacy Corp.
Case No. D2017-0708
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA”), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Domain Admin / Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <cheap-marlboro-cigarettes.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2017, 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 April 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 17, 2017. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a company specialized in manufacturing and selling cigarettes. The Complainant uses the mark MARLBORO to sell cigarettes in the USA ever since 1883, with the modern history of the brand beginning in 1955.
The Complaint is based on the Complainant’s US trademark registrations such as the US trademark No. 68,502 of April 14, 1908 for MARLBORO, covering goods in class 34. The Complainant’s main websites are available at “www.marlboro.com” and “www.marlboro.net”.
Previous UDRP panels have found that the Complainant’s trademark MARLBORO is famous worldwide. See for example 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; and Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263.
The disputed domain name <cheap-marlboro-cigarettes.com> was registered on August 27, 2015 and at the time of filing the Complaint, it resolved to a web page displaying the MARLBORO trademark, logo and distinctive images and providing cigarettes under MARLBORO trademark or other trademarks owned by the Complainant or third parties. Furthermore, particularly due to their low prices, the Complainant believes the cigarettes sold on the website corresponding to the disputed domain name are either grey market goods (i.e. they are manufactured and destined to be sold outside the USA) or counterfeits.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its famous trademark MARLBORO, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for MARLBORO.
The dominant part of the disputed domain name <cheap-marlboro-cigarettes.com> incorporates the Complainant’s famous trademark MARLBORO in its entirety together with generic words related to the Complainant’s trademark and business, “cigarettes” and “cheap”.
The majority view of UDRP panels agrees that the addition of generic wording to trademarks in a domain name is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the domain name as being connected to a complainant’s trademark. See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
To the contrary, in the present case, adding generic words directly connected to the Complainant’s trademark and field of activity, in fact increases the likelihood of confusion. See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167.
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level Domains (e.g., “.com”, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <cheap-marlboro-cigarettes.com> is confusingly similar to the Complainant’s trademark MARLBORO, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See paragraph 2.1 of theWIPO Overview 2.0.
The Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent is using the disputed domain name for a website displaying the Complainant’s trademarks without any authorization and selling grey market or counterfeit goods.
Regarding the offer to sale of prima facie counterfeit goods, this Panel obviously agrees with the previous panels that it cannot be legitimate interest in the sale of counterfeits.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine MARLBORO branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in the Paragraph 2.3 of the WIPO Overview 2.0 as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.”
This summary is based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. At least one condition that it outlines has clearly not been satisfied by the Respondent in this case: on the website corresponding to the disputed domain name there are also offered to sale third parties competing goods not only MARLBORO cigarettes.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant’s MARLBORO trademark is used in commerce since 1883 and has become famous worldwide.
The disputed domain name was registered in 2015 and incorporates the MARLBORO mark together with generic terms related to the Complainant’s business, “cigarettes” and “cheap”.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
According to the case file evidence, at the time of filing the Complaint the disputed domain name
<cheap-marlboro-cigarettes.com> was used to divert Internet users to a website displaying images of MARLBORO mark, logo and distinctive images and offering for sale cigarettes under MARLBORO trademark, as well as under other trademarks held by the Complainant or by third parties. Due to the much lower prices, the Complainant believes that, prima facie, the goods are counterfeits or grey market goods.
The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. This impression is increased by the use of the Complainant’s trademark along with descriptive words for the Complainant business in the disputed domain name and the content on the website corresponding to the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks, logo and images indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name <cheap-marlboro-cigarettes.com> who may be confused and believe that it is a website held, controlled by, or somehow related to or endorsed by the Complainant, for its commercial gain.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
In the same time, the Respondent registered the disputed domain name using a privacy shield. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names <cheap-marlboro-cigarettes.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <cheap-marlboro-cigarettes.com> be transferred to the Complainant.
Date: May 19, 2017