WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Justin Alexander

Case No. D2017-1976

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, ("United States"), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Justin Alexander of Milton, Kentucky, United States.

2. The Domain Names and Registrar

The disputed domain names <marlborodabs.com> and <marlborovapepen.com> 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 10, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2017, 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 proceedings commenced on October 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 10, 2017.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 20, 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

Complainant is a United States tobacco company. Complainant makes Marlboro brand cigarettes, and has several registrations for the MARLBORO mark dating back to at least 1908.

Respondent registered the disputed domain names on July 13, 2017. The disputed domain names lead to "parked" web pages with no material content.

5. Parties' Contentions

A. Complainant

Complainant asserts that it has spent substantial time, effort, and money advertising and promoting the MARLBORO marks, has developed substantial goodwill in the MARLBORO marks, and that the MARLBORO marks are famous. Complainant asserts that the disputed domain names are confusingly similar to Complainant's MARLBORO mark, as the disputed domain names consist of the word MARLBORO followed by the smoking-related terms "vape pen" and "dabs". Complainant describes a "vape pen" as "a sub-category of e-cigarettes", and describes a "dab" as "a concentrated dose of cannabis made by extracting THC. The resulting product is a sticky wax or amber-like substance that a user vaporizes using a 'dabber' while inhaling the smoke."

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not sponsored by or affiliated with Complainant, Complainant has not given Respondent permission to use the MARLBORO mark in the disputed domain names or otherwise, Respondent is not commonly known by the disputed domain names, Respondent has not made any legitimate use of the disputed domain names, and Respondent registered the disputed domain names on July 13, 2017 – well after Complainant registered the MARLBORO mark with the USPTO and more than 17 years after Complainant registered <marlboro.com>.

Complainant also asserts that Respondent registered and is using the disputed domain names in bad faith, as Respondent began using the disputed domain names more than 100 years after Complainant began marketing and selling MARLBORO brand cigarettes, Respondent's use of terms related to smoking – in combination with the MARLBORO mark – demonstrates Respondent's familiarity with Complainant's mark, Respondent is diverting users from Complainant's "www.marlboro.com" website and is intending to cause confusion as to the source of the disputed domain names, and Respondent is passively holding the disputed domain names in bad faith and any active use of them could only be in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings "shall 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".

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which Complainant has rights".

Complainant's trademark registrations attached to the Complaint demonstrate that Complainant has rights in the MARLBORO mark.

The disputed domain names consist of the MARLBORO mark, plus the words "vape pen" and "dabs", plus the ".com" generic Top-Level Domain ("gTLD"). Generally, when 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 be considered confusingly similar to that mark for purposes of the UDRP. WIPO Overview of Panel View on Selected UDRP Questions, Third Addition ("WIPO Overview 3.0"), section 1.7. Thus, the addition of the words "vape pen" and "dabs" and the ".com" gTLD, do not distinguish the disputed domain names from Complainant's mark. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 ("Although the domain names at issue are not identical to Complainant's marks, a finding of similarity cannot be avoided by adding a common or generic term to Complainant's mark"); WIPO Overview 3.0, section 1.11.1 ("The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test."). Indeed, where, as here, the terms added to the mark relate to Complainant's goods or services, the combination of the terms with the mark contributes to the confusing similarity. Philip Morris USA Inc. v. Andrew Soto, WIPO Case No. D2016-0247 ("The Panel agrees with Complainant that adding the descriptive terms 'weedman' and 'kush' to Complainant's trademarks will increase, not decrease, the likelihood of confusion, and will falsely suggest that Complainant markets or intends to market marijuana cigarettes.").

Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has "no rights or legitimate interests in respect of the domain name[s]", paragraph 4(a)(ii) of the Policy.

"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 [Respondent's] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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."

Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, or that Respondent has been commonly known by <marlborodabs.com> or <marlborovapepen.com>. Rather, Complainant asserts that its marks are famous, that Respondent is not sponsored by or affiliated with Complainant, that Respondent is not known by the disputed domain names and that Respondent's WHOIS information "does not resemble the [d]isputed [d]omain [n]ames in any manner", that Complainant has never authorized Respondent to use the MARLBORO mark or the disputed domain names, that Respondent has not made any legitimate use of the disputed domain names, that the disputed domain names instead lead to blank pages with no content, and that Respondent registered the disputed domain names more than 100 years after Complainant began using the MARLBORO mark and more than 17 years after Complainant registered <marlboro.com>.

These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 ("No evidence was presented that at any time had Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.").

Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

"[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

"Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark would also satisfy the complainant's burden." WIPO Overview 3.0, section 3.1.

Complainant asserts that the following facts support a finding that Respondent registered and is using the disputed domain names in bad faith: Respondent began using the disputed domain names more than 100 years after Complainant began marketing and selling MARLBORO brand cigarettes, Respondent is using the MARLBORO mark in combination with terms related to smoking ("dabs" and "vape pen"), Respondent is diverting users from Complainant's "www.marlboro.com" website and is intending to cause confusion as to the source of the disputed domain names, and Respondent is passively holding the disputed domain names in bad faith and any active use of the disputed domain names could only be in bad faith. Respondent did not respond to the Complaint and thus has not controverted any of these contentions.

Taken as a whole, these contentions support a finding of bad faith registration and use. As the Panel noted in Philip Morris USA Inc. v. Andrew Soto, WIPO Case No. D2016-0247:

First, numerous UDRP cases have found that Complainant's MARLBORO mark is famous. It is inconceivable under the circumstances that Respondent intended to make a legitimate use of Complainant's famous trademark; that itself is evidence of bad faith. Second, Respondent went a step further by combining Complainant's famous mark with the terms 'weed' and 'kush', conflating Complainant's marks with unlawful smoking materials. That too is evidence of bad faith – and further, evidence that Respondent was well aware of Complainant's famous mark at the time the disputed domain names were registered. Third, that Respondent is not actively using the disputed domain names is an indicator of bad faith. Combined with the facts that Complainant has a well-known trademark, and that no response to the Complaint has been filed, this Panel is justified in concluding the disputed domain names were registered and are used in bad faith. Taking all of these facts into consideration, the Panel finds that the disputed domain names were registered and are being used in bad faith.

See also, The American Automobile Association, Inc. v. AAA Automotive, WIPO Case No. D2012-0871 ("Respondent's registration of the disputed domain name over 100 years after Complainant's adoption and extensive use of the mark (i.e., at a time when Respondent almost certainly knew of Complainant's trademark rights) … also is evidence of bad faith"); Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 ("The Panel accepts the contention, and agrees with the principle enunciated … in the decisions cited above, that the fame of the MARLBORO trademarks makes it inconceivable that Respondent registered or has used the disputed domain name without knowledge of Complainant's rights and further that this leads to the necessary inference of bad faith."); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 ("in registering and holding the disputed domain name, Respondent creates a likelihood of confusion with Complainant's famous trademark and deprives Complainant from offering its products to prospective clients who are clearly looking for it via the disputed domain name. The present lack of active use of the disputed domain name does not help Respondent. Previous UDRP decisions have shown that the mere passive holding of a domain name may be characterized as bad faith in some cases, mainly considering that the disputed domain name reproduces a well-known trademark."); Philip Morris USA Inc. v. Malton Int'l Ltd., WIPO Case No. D2009-1263 ("Complainant has also proved [registration and use in bad faith]. The Panel has come to that view for the following reasons: ... Respondent was obviously aware of Complainant and its Marlboro cigarettes when it registered the Domain Name. Without any authority from Complainant, Respondent has incorporated Complainant's mark in the Domain Name. Respondent's failure to file any Response in this proceeding is consistent with the Panel's conclusion that the Domain Name was registered, and has been used, in bad faith.").

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and are being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

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, <marlborodabs.com> and <marlborovapepen.com> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: December 3, 2017