WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Marlboro Woman

Case No. D2017-0735

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 Marlboro Woman of Houston Texas USA.

2. The Domain Name and Registrar

The disputed domain name <themarlborowoman.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 April 11, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2017. Apart from the emails of April 18, 2017 and May 30, 2017 (quoted, below) from the Respondent, no Response was filed with the Center. On May 11, 2017 the Center notified the Respondent that the deadline for a response had passed and that a panel would be appointed to decide the case.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on May 26, 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 Panel has decided to admit the two referenced emails from the Respondent, although the second one was clearly out of time.

4. Factual Background

The Complainant manufactures, markets and sells cigarettes in the United States, including cigarettes under the Marlboro name. The Complainant is the registered owner of the following United States trademarks: MARLBORO, registration No. 68,502, registered April 14, 1908 and MARLBORO and Red Roof design, registered No. 938,510, registered July 25, 1972, both in the category of cigarettes.

Little is known about the Respondent, which uses a domain masking service; the disputed domain name registrant is listed as “Marlboro Woman” which maintains a P.O. Box in Houston, Texas, USA.

The disputed domain name was registered on February 8, 2011. The website at the disputed domain name remains inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its MARLBORO trademarks are famous and that the Complainant has spent great effort and money promoting these trademarks and building up significant goodwill in them. Furthermore, the Complainant points out that the term “Marlboro Woman” deliberately evokes the Complainant’s extremely well-known “Marlboro Man” marketing campaign in order to create a likelihood of confusion with it and the Complainant’s trademarks.

The Complainant submits the first three elements of paragraph 4(a) of the Policy are here readily proven and this despite the additional words in the disputed domain name, the Respondent’s use of the name Marlboro Woman as a pseudonym, and the lack of active use of the disputed domain name in connection with an Internet site.

Thereupon the Complainant requests that the disputed domain name be transferred to it.

The facts and arguments underlying the Complaint will, to the extent necessary, be discussed further in the Discussion and Findings below.

B. Respondent

As noted above the Respondent’s sent an April 18, 2017 email to the Center. The email reads as follows:

“Subject; Phillip Morris-The Marlboro Woman Website
Hello.
Could you please elaborate on what the issues with Phillip Morris are concerning The Marlboro Woman website?
Thank you
Marlboro Woman”

In apparent response to the Center’s email notifying the Parties or the appointment of the undersigned panelist, the Respondent, on May 30, 2017, sent a second email which reads as follows:

“To: Domain Disputes; [name@apks.com[...]; [name@apks.com[...]
Subject: Re: (CJ) D2017-0735 <themarlborowoman.com> Notification of Panel Appointment (1-member panel)
What is this?”

No other communications were received from the Respondent; thus the Respondent did not reply to the contentions of the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name contains the entirety of the Complainant’s very well-known trademark MARLBORO. The addition of the generic words “the” and then “woman” does not meaningfully distinguish the disputed domain name from the Complainant’s trademark, or significantly diminish the confusing similarity between the two. These additions may, in fact, add to the confusing similarity with the Complainant’s trademark if, as the Complainant plausibly alleges, they are designed to evoke the Complainant’s famous “Marlboro Man” cowboy.

The first element of paragraph 4(a) of the Policy is accordingly proven.

B. Rights or Legitimate Interests

The Respondent has failed to answer the contentions of the Complaint which was duly served on it at its email address; instead the Respondent submitted two brief emails which appear to be dissembling enquiries about the case.

UDRP decisions have consistently ruled that the complainant needs to establish at least a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the respondent to prove that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd v. “osama bin laden”, WIPO CaseDCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.

In the present case the Complainant has directly confirmed that it has not authorized or licensed the Respondent to use its trademark in a domain name or in any other manner, and that it has no knowledge or belief of any rights or legitimate interest of the Respondent in the disputed domain name.

There is furthermore no evidence or indicia in the case file suggesting that the Respondent has any rights in the disputed domain name. In this connection the Respondent’s adoption of the term “Marlboro Woman” in registering the disputed domain name and in emails is to be discounted as all evidence and indicia points to this being a pseudonym itself likely adopted in bad faith; the use of this name here does not therefore provide a basis for assuming that the Respondent has any legitimate interests or rights in the disputed domain name.

The Respondent having failed to answer the contentions of the Complaint or assert any rights or legitimate interests in the disputed domain name, the Complainant has accordingly met its burden under paragraph

4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name in year 2011 cannot reasonably have been carried out in good faith. The Complainant’s MARLBORO trademark has been shown by the Complaint to have been very widely known and famous for generations prior to that registration. The notoriety and fame of the Complainant’s trademarks has been confirmed in many UDRP decisions. See, e.g., Philip Morris USA Inc. v. José Vincente Gomar Llacer and Gandiyorsk SL, WIPO Case No. D2014-2264; Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No.D2007-1609. The formulation “themarlborowoman” in the disputed domain name was likewise not arrived at by serendipity, but can only be a bad faith registration by a person with knowledge of the Complainant’s trademarks and fame.

The disputed domain name currently resolves to an inactive website, but such passive use can still be bad faith use as found in the Telstra case and its progeny. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at 3.3. There is here no good faith explanation for the Respondents registration and actions with regard to the disputed domain name.

The emails of the Respondent to the Center, appear to be disingenuous, as the Respondent was served with the Complaint at the same “Marlboro Woman” email address as it used to communicate with the Center, and had prior notice that the Center would move to nominate an administrative panel. This behaviour, together with the use of a masking service, is further indicia of bad faith.

For all the foregoing reasons the Complainant has also met its burden under paragraph 4(a)(iii) of the Policy.

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 <themarlborowoman.com> be transferred to the Complainant.

Nicolas Ulmer
Sole Panelist
Date: June 6, 2017