WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Deep Nuke t/a Lagnit Bali

Case No. D2012-1037

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States.

The Respondent is Deep Nuke t/a Lagnit Bali of Denpasar, Bali, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <indonesiamarlborocigarettes.com> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On May 16, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On May 16, 2012, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2012.

The Center appointed Jon Lang as the sole panelist in this matter on June 22, 2012. 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 manufactures, markets, and sells in the United States cigarettes, including cigarettes under its famous MARLBORO trademarks, including United States trademark registration no. 68,502 for MARLBORO registered on April 14, 1908 and United States trademark registration no. 938,510 for MARLBORO with Red Roof design, registered on July 25, 1972. Cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. The Complainant has for several years used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and, as a result, has developed substantial goodwill in those marks which have become distinctive and uniquely associated with the Complainant and its products.

The Complainant has registered the domain name <marlboro.com> which points to its website at “www.marlboro.com”. The site enables access to information regarding the Complainant’s MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.

The Domain Name was registered on December 5, 2009.

5. Parties’ Contentions

A. Complainant

At the time the Complainant discovered the Domain Name it resolved to a website at “www.indonesiamarlborocigarettes.com” which redirected the Internet user to an online store selling illegally imported MARLBORO cigarettes, as well as several other cigarette brands.

The Complainant believes that the Respondent has established the infringing website in an attempt to trade on the goodwill of the Complainant and its MARLBORO trademarks.

i) The Infringing Domain Name Is Confusingly Similar to the MARLBORO Trademarks

Through widespread, extensive use in connection with its products, the MARLBORO trademarks have become uniquely associated with the Complainant and its products, and are well known and famous throughout the United States.

The Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy.

Courts and administrative panels have long recognized 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 and numerous panels have held that a domain name is confusingly similar to a trademark, where, as here, the domain name incorporates the mark in its entirety. The mere addition of “indonesia” and “cigarettes” does not distinguish <indonesiamarlborocigarettes.com> from the Complainant’s trademarks.

ii) The Respondent Has No Legitimate Interests or Rights in the Domain Name

The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word “marlboro.” The Complainant does not believe that the Respondent has ever sought or obtained any trademark registrations for the word “marlboro” or any variation thereof, and indeed could never do so given the Complainant’s pre-existing and exclusive rights to the mark. Moreover, the Respondent has not received any license, authorization, or consent, express or implied, to use the MARLBORO trademark in a domain name.

The Respondent’s misappropriation of the MARLBORO mark by its inclusion in the Domain Name is no accident. Clearly, the Respondent chose to use the mark to draw Internet users to its website by capitalizing on the association of the MARLBORO mark with the Complainant’s tobacco products.

The Respondent’s objective was to divert Internet users seeking to visit the Complainant’s website and the misappropriation of the MARLBORO mark for this purpose does not give rise to a right or legitimate interest but rather indicates the Respondent’s bad faith.

iii) The Respondent Has Registered and Is Using the Domain Name in Bad Faith

There is no doubt that the Respondent was aware of the Complainant’s rights in the MARLBORO trademarks (evidenced by, inter alia, its own version of the description of the history of the marks on its website) and the Respondent has registered the Domain Name in bad faith by doing so with full knowledge of the Complainant’s rights.

Moreover, a simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. Its rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the United States Patent and Trademark Office records that are readily accessible online. Also, the Respondent is deemed to have constructive notice of the Complainant’s USA’s trademark rights by virtue of its federal registrations for certain of its MARLBORO trademarks, including those referred to above.

The Respondent’s solicitation of offers to purchase the Domain Name on the Registrar’s website, “www.enom.com” also demonstrates the Respondent’s bad faith registration, the Complainant believing that the Respondent’s solicitation is for the purpose of resale of the Domain Name at a profit to the Complainant or any other member of the public that responds to the Respondent’s solicitation.

The Respondent’s use of the Domain Name to lure adult smokers to its website demonstrates bad faith use under the Policy, a conclusion which is supported by the Respondent’s statement on its website that it is “the best source for you to get information about buying first-class Marlboro cigarettes online.”

Furthermore, the Respondent’s solicitation of offers to buy the Domain Name also evidences the Respondent’s bad faith use.

The Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. The Domain Name is so obviously indicative of the Complainant’s MARLBORO products that the Respondent’s use of the Domain Name would inevitably lead to confusion.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant has rights in its own trademarks for the purposes of the Policy.

The Domain Name incorporates the Complainant’s mark MARLBORO in its entirety and is very much its dominant element, being a distinctive mark of considerable fame placed between the name of a country, Indonesia, and the product with which the MARLBORO mark is associated, cigarettes.

However, as the mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.

Given the highly distinctive nature of the MARLBORO mark which is readily recognizable within the Domain Name (and very much its dominant element), the Panel is satisfied that the Domain Name <indonesiamarlborocigarettes.com> is confusingly similar to the Complainant’s trademark, MARLBORO.

Even if one were to adopt a possibly slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a) of the Policy has been established

B. Rights or Legitimate Interests

By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name. However, to ensure that such a finding would be appropriate, a brief analysis of the manner in which a respondent might demonstrate that it does have rights or legitimate interests in respect of a domain name is set out below. In doing so, the Panel accepts the underlying contention of the Complainant in relation to the use made of the Domain Name, namely that it resolved to a website which redirected the Internet user to an online store selling what the Complainant considers to be illegally imported MARLBORO cigarettes, as well as several other cigarette brands, a contention that (in the absence of a Response) has not been contradicted or challenged by the Respondent.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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.

Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves, i.e., a website to which a confusingly similar domain name resolves which redirects the Internet user to an online store selling what the Complainant considers to be illegally imported MARLBORO cigarettes, as well as several other cigarette brands, the Panel would not accept that there is legitimate noncommercial or fair use. Any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here. Also, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a website (at which an Internet user might arrive by typing a confusingly similar domain name that so obviously takes advantage of the fame of a complainant’s trademark) which redirects the Internet user to an online store selling what the Complainant considers to be illegally imported products of a complainant, as well as competing products, could be a bona fide offering.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A complainant may demonstrate bad faith registration and use in various ways. The Policy describes some circumstances, which if found by the Panel to be present, shall be evidence of the registration and use a domain name in bad faith. Included in the non-exhaustive list of circumstances evidencing bad faith registration and use are:

“(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 […]

(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.”

It is clear from the use made of the Domain Name by the Respondent that it must have been aware of the Complainant’s MARLBORO mark at the time of registration and the Panel is satisfied that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s MARLBORO mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on or available through it.

In the circumstances, the Panel need not consider whether the Respondent’s solicitation of offers to purchase the Domain Name on the Registrar’s website is also indicative of bad faith registration and use, a finding which in any event may have been problematic given that there is no evidence of an intended sale “for valuable consideration in excess of […] out-of-pocket costs directly related to the domain name”.

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith 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 Domain Name <indonesiamarlborocigarettes.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Dated: July 3, 2012