WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registrant of marlboro-war.org, Stichting OpenTLD WHOIS Proxy / Ahmed Samy Mohamed Gad, Evolera Company

Case No. D2017-0774

1. The Parties

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

The Respondent is Registrant of marlboro-war.org, Stichting OpenTLD WHOIS Proxy of Amsterdam, Netherlands / Ahmed Samy Mohamed Gad, Evolera Company of Egypt.

2. The Domain Name and Registrar

The disputed domain name <marlboro-war.org> is registered with OpenTLD B.V. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On 20 April 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On May 1, 2017, an email communication from the Respondent was received by the Center. The Complainant filed an amended Complaint on May 2, 2017.

The Center verified that the Complaint together with the amended 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 May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel Appointment Process on May 26, 2017.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 14, 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.

4. Factual Background

The Complainant is an American company from Virginia, which manufactures, markets, and sells cigarettes in the United States including cigarettes under the trademarks MARLBORO, since 1883.

The Complainant is the owner of the trademark MARLBORO No. 68,502, registered in April 14, 1908 (and its variations) in class 34 with the US Patent and Trademark Office, which has been duly renewed, and several other MARLBORO trademarks subsequently registered with the US Patent and Trademark Office (thereafter the "MARLBORO trademarks").

The Complainant has registered the domain name <marlboro.com> in March 6, 2000, which points to the Complainant website "www.malboro.com" and enables access to information regarding the Complainant and MARLBORO products.

The disputed domain name <marlboro-war.org> was registered by the Respondent on February 24, 2017, with OpenTLD B.V. and currently directs to an inactive website containing an error message that informs Internet users that the service is unavailable.

The Respondent has registered the disputed domain name by using a domain registrant identity shielding service. The address listed for the Respondent in the WhoIs records is the same as that of Stichting OpenTLD Whois Proxy, a privacy shielding service.

The Administrative Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties' Contentions

A. Complainant

First, the Complainant contends that the disputed domain name is identical or confusingly similar to the trademark MARLBORO in which the Complainant has rights.

The Complainant first argues that the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products.

The Complainant then explains that the disputed domain name is confusingly similar to the MARLBORO trademarks. The Complainant explains that consumers expect domain names incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner. A domain name is confusingly similar to a trademark where, the domain name incorporates the mark in its entirety.

The Complainant explains that the addition of the generic word "war" to "MARLBORO" in the disputed domain name does not distinguish the disputed domain name from the Complainant's MARLBORO trademarks. Moreover, the use of a hyphen in the disputed domain name is not a distinguishing factor.

The Complainant adds that the addition of a generic Top-Level Domain Name ("gTLD"), such as ".org" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

The Complainant further considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, the Complainant asserts that the Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the products provided by the Complainant under the MARLBORO trademarks. The Respondent has not received any license, authorization, or consent, express or implied to use the MARLBORO trademarks in a domain name or in other manner. Moreover, according to the Complainant, the Respondent is not known by any name or tradename that incorporates the word "Marlboro".

The Complainant also highlights that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with goods and services. Furthermore, the Respondent is not making a legitimate noncommercial or faire use of the disputed domain name without intent or commercial gain, as the disputed domain name points to an inactive website.

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 trademarks.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant contends that the Respondent has registered the disputed domain name in bad faith and is in full knowledge of the Complainant's rights in the MARLBORO trademarks which predate the Respondent's registration of the disputed domain name. Indeed, the disputed domain name was registered more than a century after the Complainant's trademarks. The Complainant's rights in the MARLBORO trademarks are obvious.

The Complainant submits that the fact that the registrant of the disputed domain name used a privacy service to hide its identity, is also a strong indication of both bad faith registration and use.

Finally, the Complainant contends that bad faith of the Respondent is bolstered by the fact that the disputed domain name resolves to an inactive website.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds that the Complainant has provided evidence that it has rights in the trademark MARLBORO.

The disputed domain name is composed of the distinctive element "marlboro", which is the exact reproduction of the MARLBORO trademark, and the generic term "war" and thegTLD ".org".

As pointed out by the Complainant, a gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).

Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov, WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Regarding the disputed domain name <marlboro-war.org>, the Panel finds that the addition of the generic suffix "war" to the MARLBORO trademark is not sufficient to exclude confusing similarity. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (See section 1.8 of the WIPO Overview 3.0 and LEGO Juris A/S v. DBA David Inc/ DomainsByProxy.com, WIPO Case No. D2011-1290, <legoninjagokai.com>).

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name must be considered as confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. These circumstances are :

(i) before any notice 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has made a prima facie showing that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its MARLBORO trademark, and that the Respondent is not known by the disputed domain name.

The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent.

However, it turns out that the Respondent has not provided any answer to the Complainant's contentions.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Particular circumstances panels may take into account in assessing whether the respondent's registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant's area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant's area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant's failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant (See section 3.2.1 of the WIPO Overview 3.0).

First of all, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.

Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant's mark specifically because of the high distinctiveness of the MARLBORO trademark and its registration date.

The Panel also considers that the Respondent's use of a privacy service to mask its identity is also an indication of bath faith.

The Panel finds that the disputed domain name is not currently used since it resolves to a webpage that indicates that the service is unavailable, but wishes to remind that such "passive holding" does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

Furthermore, prior UDRP panel decisions considered that "The fact that the disputed domain name was routed to an inactive website after the Complaint was filed is further evidence of bad faith usage" (see, e.g., Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471), as is the case here.

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name 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 name <marlboro-war.org> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: June 27, 2017