WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Ma Jia Huan

Case No. D2018-1291

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Ma Jia Huan of Xi’an, China.

2. The Domain Name and Registrar

The disputed domain name <marlborocode.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, 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. On June 18, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted an amended Complaint on June 20, 2018, in which it requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent sent an email communication in Chinese on June 15, 2018, simply acknowledging receipt of the Complainant and asking for details of the proceeding but did not submit any formal response. The Center notified the Parties of the Commencement of Panel Appointment Process on July 16, 2018.

The Center appointed Francine Tan as the sole panelist in this matter on July 23, 2018. 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 owns numerous trade mark registrations in the U.S. for the trade mark MARLBORO, including U.S. Registration Nos. 68,502 (registered on April 14, 1908), 3,365,560 (registered on January 8, 2008) and 3,419, 647 (registered on April 29, 2008). These registrations are all for goods in International Class 34.

The Complainant registered the domain name <marlboro.com> on March 6, 2000. The domain name resolves to the Complainant’s website which enables access to information regarding the Complainant, its MARLBORO-branded products, and special offers to age-verified adult smokers 21 years of age or older. The Complainant also owns the domain name <marlboro.net>.

The disputed domain name was registered on April 19, 2018 and does not resolve to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant has spent substantial time, money and effort in advertising and promoting the MARLBORO trade mark throughout the U.S., as a result of which substantial goodwill has been developed. The MARLBORO trade mark has become distinctive and is uniquely associated with the Complainant and its products. Numerous UDRP panels have held that MARLBORO is a famous mark. (See e.g. 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. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011‑1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263).

The Complainant contends, firstly, that the disputed domain name is confusingly similar to its MALBORO trade mark as it captures the mark in its entirety. The addition of the descriptive term “code” to the end of the trade mark does not negate the confusing similarity with the Complainant’s MALBORO trade mark.

The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. The Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trade mark. The Respondent has not made use of the disputed domain name and not demonstrated any attempt to make legitimate use of the disputed domain name. The disputed domain name was registered long after the Complainant’s registration of its <marlboro.com> domain name.

The Complainant contends, thirdly, that the disputed domain name was registered and is being used in bad faith. The Complainant and its MARLBORO trade mark are well known, and the Complainant has numerous trade mark registrations. The Complainant has marketed and sold goods using the MARLBORO trademark since 1883. It is not conceivable that the Respondent was unaware of the Complainant’s MARLBORO trade mark and business. The MARLBORO trade mark is so closely linked and associated with the Complainant that the Respondent’s use of the mark strongly implies bad faith. Bad faith use does not require a positive act on the Respondent’s part and passive holding of a domain name can constitute bad faith registration and use under the Policy.

The disputed domain name registration must have been intended to cause confusion among Internet users as to the source of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In its email communication of June 15, 2018, the Respondent simply acknowledged receipt of the Complaint and asked for details of the proceeding.

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement is Chinese. The Complainant requested for the proceeding to proceed in English for these reasons:

(a) The Complainant is unable to communicate in Chinese;

(b) Requiring a Chinese translation of the Complaint would unfairly disadvantage and burden the Complainant, and delay the proceeding;

(c) The term “Marlboro” which is the dominant portion of the disputed domain name does not carry any specific meaning in the Chinese language; and

(d) The additional descriptive term “code” is an English word.

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding” Paragraph 10(c) of the Rules stipulates, inter alia, that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.

Bearing in mind the respective interests of the parties, namely to ensure that each is treated equally and given a fair opportunity to present its case (paragraph 10(b) of the Rules), and that the administrative proceeding takes place with due expedition (paragraph 10(c) of the Rules), the Panel determines that it would be appropriate in this case for English to be the language of the proceeding.

The fact that the Respondent chose the combination of terms “marlboro” and “code” indicates that the Respondent has a level of understanding of the English language. The Respondent did not claim that it does not understand English. Moreover, the Respondent was notified by the Center in the Chinese language of the nature of the proceeding and relevant deadlines for responding to the Complaint and on the issue of the language of the proceeding. It could have corresponded with the Center and responded to the Complainant’s assertions in the Chinese language, but did not.

The Panel determines, in the circumstances, that the Respondent would not be prejudiced if English were to apply as the language of the proceeding. To impose a requirement for the Complainant to translate the Complaint and supporting documents into Chinese would be contrary to the Policy aim of ensuring that the administrative proceeding take place with due expedition since it would delay matters. The Panel has not been given any reason by the Respondent to delay the proceeding on the basis of the language of the Registration Agreement.

The Panel therefore determines that English shall be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Complainant has established it has registered rights in the trade mark MARLBORO.

The disputed domain name incorporates the MARLBORO trade mark in its entirety; the mark is easily identifiable therein. The Panel takes the view that the addition of the term “code” does not serve to remove the confusing similarity with the Complainant’s trade mark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy indicates how a respondent can demonstrate his rights or legitimate interests to the disputed domain name, namely by establishing any of the following circumstances (which list is not exhaustive):

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case. There is no evidence of any relationship between the Complainant and the Respondent, nor of the Respondent being commonly known by the name “marlborocode”. The Respondent has not been authorized to use the Complainant’s MARLBORO trade mark, whether in a domain name registration or in other ways.

The Respondent did not reply to the Complainant’s contentions nor demonstrated its rights or legitimate interests in the disputed domain name. In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:

“(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 web site or location or of a product or service on your web site or location.”

The incorporation of the entire well-known MARLBORO trade mark in the disputed domain name gives rise to a strong presumption that the Respondent registered the disputed domain name with the Complainant’s trade marks in mind. The MARLBORO has no meaning and is so uniquely associated with the Complainant and as its trade mark that it is not at all plausible that the Respondent registered the disputed domain name without knowledge of the Complainant and its “Marlboro” brand. Neither can one conceive of any actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate, considering the rights the Complainant has developed in relation to the MARLBORO trade mark and business.

Although the disputed domain name is not in active use, it can be surmised that the Respondent must have been aware of the reputation of the Complainant and its business, and therefore selected this word for its domain name registration. The Respondent did not explain the derivation of the term “marlboro code” for its domain name registration. Furthermore, when one considers the tremendous length of time and extent to which the Complainant has been in business, not only in the U.S. but also on a global scale, the Respondent could not have been unaware of the Complainant’s business and rights in the trade mark MARLBORO at the time of registering the disputed domain name. In the circumstances, the fact that the disputed domain name is passively held does not prevent a finding of bad faith registration and use in view of how well known the trade mark is. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232.)

The Panel is persuaded that the Respondent had the Complainant’s MARLBORO trade mark in mind when registering the disputed domain name. In the absence of any arguments in response by the Respondent, the Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.

In the premises, the Panel finds that the third element of paragraph 4(a) of the Policy has been 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 name <marlborocode.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: July 24, 2018