WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. James Brooks / ICP, LLC

Case No. D2015-1862

1. The Parties

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

Respondent is James Brooks / ICP, LLC of Cypress, Texas, United States.

2. The Domain Names and Registrar

The disputed domain names <marlborobuds.com> and <marlboroherbco.com> (the "Disputed Domain Names") 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 19, 2015. On October 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 21, 2015, 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 November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 26, 2015.

The Center appointed James H. Grossman as the sole panelist in this matter on December 2, 2015. 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.

On December 2, 2015, Respondent advised the Center by email that he was the owner of the Disputed Domain Names and stated he "was wondering about this dispute. Please contact me about this dispute". On December 6, 2015, Respondent was provided by the Panel with a copy of the Center's notification to him of November 5, 2015, and given another opportunity to respond, but no later than 3 pm on Tuesday December 8, 2015. No such response was received by that time and date. On December 9, 2015, the Respondent sent an informal response via email to the Panel, which response the Panel finds failed to address the issues of Complainant's Complaint. Accordingly, as set forth in the December 11, 2015 notice to Respondent from the Center, the Panel will proceed with the case without receipt of any formal response from Respondent.

4. Factual Background

Complainant is the United States tobacco division of Altria Group, Inc., a large multinational corporation, which is publicly traded in the United States under the symbol "MO". Complainant manufactures, markets, and sells a number of different cigarette brands in the United States, including cigarettes under the MARLBORO trademark. Complainant has been the registered owner of the MARLBORO trademark (Reg. No. 68,502, showing a first use date of "0-0-1883") since April 14, 1908 and renewed most recently on March 21, 2008 as well as the MARLBORO and Red Roof Design trademark (Reg. No. 938,510, showing a first use of "0-0-1954" and renewed most recently on July 25, 2012) since July 25, 1972. (Hereinafter the two MARLBORO trademarks are sometimes referred to as the "Trademarks")

Complainant advised that it registered the domain name <marlboro.com> first on March 6, 2000. The Complainant's domain name points to the Marlboro website of "www.marlboro.com" which provides information regarding Complainant's products, including special offers to adult smokers 21 years of age or older.

The Disputed Domain Names both resolve to a website bearing the message stating "website coming soon! Please check back soon to see if the site is available".

5. Parties' Contentions

A. Complainant

Complainant advises it manufactures, markets, and sells cigarettes in the United States, including cigarettes under its "famous" Trademarks. According to Complainant, MARLBORO cigarettes have been made and sold by Complainant and its predecessor entities since 1883 with its modern history stemming from 1955. Thus, Complainant has been for many years using the Trademarks and variations thereof in connection with its tobacco and smoking-related products.

Complainant is the owner of the Trademarks referred to above under section 4 "Factual Background" and has spent substantial time, effort, and money advertising and promoting the Trademarks in the United States and has developed substantial goodwill in such Trademarks. The Trademarks are uniquely associated with Complainant, who points out that a number of UDRP administrative panels have determined that the Trademarks are famous. For example, the panel in Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 stated "As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide…."

Complainant confirms it has the trademark rights referred to hereinabove as well as the domain name <marlboro.com> which allows access to its website at "www.marlboro.com".

For purposes of the substantive issues of this dispute, Complainant points out that prior UDRP panels have determined that a valid trademark establishes "sufficient prima facie proof of a 'right' under paragraph 4(a)(i) of the Policy". Roust Trading Ltd. v. AMG LLC, WIPO Case No. D2007-1857.

Complainant states that it has long been recognized that consumers expect domain names incorporating a company's name or trademark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int'l L.P. v. Toeppen, 141 F.3d. 1316, 1326 (9th Cir. 1998). In this case both of the Disputed Domain Names incorporate the entire word "Marlboro". In a similar UDRP case where the Complainant's entire Trademark was included in the domain names, to which were added the additional word "black" ("marlboroblack"), the panel considered this structure confusingly similar to the Complainant's mark. See Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (also recognizing the fame of the MARLBORO Trademarks).

Complainant notes that the terms "herb" or "buds" which are added to the MARLBORO Trademarks in the Disputed Domain Names are synonymous with marijuana and therefore falsely suggest that Complainant is either marketing or intends to market a marijuana cigarette which Complainant says is not the case and which would violate United States federal law.

The addition of a generic Top-Level Domain ("gTLD") such as ".com" according to Complainant has been held to be irrelevant when determining whether a domain name is confusingly similar to a protected trademark.

With regard to Respondent's rights or legitimate interests in the Disputed Domain Names, Complainant is quite clear that Respondent 1) has no connection or affiliation with Complainant; 2) was never known by a name or trade name that incorporates the word "Marlboro"; 3) has not received any license, authorization or consent, express or implied, to use the Trademarks in any manner; nor 4) is there any bona fide offering of goods and services or legitimate noncommercial or fair use of the Disputed Domain Names.

According to Complainant, Respondent has chosen to use the Trademarks to divert Internet users to the Disputed Domain Names' sites, capitalizing on the famous Marlboro name. A previous UDRP panel stated it was "inconceivable" for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks "given the longtime use of the Marlboro trademarks and strength of its brand." Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790. The simple passive holding of the Disputed Domain Names without any actual message other than the "check back later" language on the website to which they resolve does not constitute a legitimate use of Complainant's Trademarks.

Similarly, this passive holding argument could be made with regard to bad faith. The MARLBORO trademark has been in use since 1883 and was registered in 1908. Earlier UDRP panels have ruled that, given the pre-existing fame of the Trademarks, a respondent's unauthorized registration of a "Marlboro" domain name is evidence of bad faith. See e.g. Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264. Further, due to the fame of Complainant's Trademarks, several panels have determined that the respondent is deemed to have not just constructive knowledge, but actual knowledge of the Trademarks and of Complainant's rights upon registration of the Disputed Domain Names. Complainant notes it has been held that failure to make an active use of the infringing domain name supports a finding of registration and use in bad faith. Finally, the use by Respondent of "herb" and "bud" with the negative connotations described herein, together with use of the Trademarks, Complainant argues tarnishes Complainant's intellectual property rights and dilutes its value in the marketplace.

Based upon all of the above, the Complainant requests a decision transferring the Disputed Domain Names to Complainant.

B. Respondent

Subsequent to November 25, 2015, by which date Respondent was to have responded pursuant to notice from the Center dated November 5, 2015, Respondent asked for some information relating to the dispute. The Panel gave the Respondent a short time to respond to include his reasons for the failure to respond by November 25, 2015, the date set in the original notice from the Center. The Respondent also failed to meet the new deadline provided in the notification by the Panel. When Respondent did respond after the deadline set by the Panel, the Panel determined that the response was inadequate to be considered a response to the Complainant's contentions as described in the notice from the Center. Accordingly, the Panel has determined that the Respondent did not reply to the Complainant's contentions and has set forth the implications of this failure below in Paragraph 6.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that each (and thus all) of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to 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".

As stated above, despite some attempts that the Panel determined to be inadequate, Respondent has defaulted by failing to timely file a response to the allegations of the Complainant. Paragraph 14 (a) of the Rules states: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint." Further, pursuant to paragraph 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complaint. Further, certain factual conclusions may be drawn on the basis of Complainant's undisputed representations (id paragraph 15(a)).

Also, paragraph 14(b) of the Rules states: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate." When applying this provision, panelists have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant and a number of cases hold for a non-responsive respondent where a complainant fails to prove all the elements of paragraph 4(a). Nevertheless, a panel may draw negative inferences from the respondent's default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413.

Another UDRP administrative panel stated that the panel is entitled to accept all reasonable allegations and inferences set forth in the complaint as true unless the evidence is clearly contradictory.

A. Identical or Confusingly Similar

The Panel has determined there is no doubt as to the international recognition of the Marlboro brand. Cases cited by Complainant make it clear that this case meets the test of confusingly similarity.

The issue of confusing similarity is well considered by the panel in Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The panel in that case, which also involved a very well known trademark,

"concurs with the opinion of several prior WIPO UDRP panels, which have held that, when a domain name wholly incorporates a complainant's registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. " See, e.g. Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In the disputed domain name the PLAYBOY trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark." See, Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

Also, the addition of the suffix "..com" is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582."

Based on the evidence provided by Complainant as well as prior decisions of UDRP panels, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The second element of a claim of wrongful domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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." Policy, paragraph 4(c).

Complainant has provided in detail, as set forth above, a clear picture of exactly the reasons Respondent has failed to meet any of the requirements of paragraph 4(a)(ii). Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names.

The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

The third element that Complainant must prove is that the Respondent registered and is using the Disputed Domain Names in bad faith (Policy, paragraph 4(a)(iii)). Here, the Trademarks were registered far earlier than the Disputed Domain Names' creation. The Panel has determined that there is no doubt as to the international recognition of the Trademarks. In view of the long standing stature of the Trademarks, the Panel is of the view that Respondent's actions in registering the Disputed Domain Names were clearly an attempt to establish confusingly similar domain names, which would more than likely lead an Internet user to believe the Disputed Domain Names were tied to Complainant's business. The Panel therefore finds registration of the Disputed Domain Names to have been in bad faith.

Panels have typically found that inactive use of a domain name does not preclude a finding of bad faith. See paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition Here, the Trademarks' fame as well as lack of convincing rebuttal by Respondent leads the Panel to find the Disputed Domain Names are being used in bad faith.

The Panel considers that the primary issue in this case relates to the Respondent's use of the Complainant's "MARLBORO" trademarks to which Respondent simply added words in an attempt to allow an Internet user to believe that Respondent had some valid connection to the Trademarks and the Complainant.

The elements necessary for proof of registered and used in bad faith have been set out in Complainant's contentions which the Panel has set out above in detail. The Panel confirms that section 4(a)(iii) of the Policy has been met.

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 <marlborobuds.com> and <marlboroherbco.com> be transferred to Complainant.

James H. Grossman
Sole Panelist
Date: December 14, 2015