WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Andrew Soto

Case No. D2016-0247

1. The Parties

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

Respondent is Andrew Soto of West Covina, California, United States.

2. The Domain Names and Registrar

The disputed domain names <marlborokush.com> and <marlboroweedman.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 February 9, 2016. On February 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 proceeding commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2016.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on April 7, 2016. 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 owns United States registration number 68,502 for the trademark MARLBORO (stylized), registered on April 14, 1908. Complainant also owns United States registration number 938,510 for MARLBORO (stylized), registered on July 25, 1972.

The disputed domain names were both registered on November 5, 2015.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it manufactures, markets and sells cigarettes in the United States, including under the MARLBORO brand, registered as described above. Complainant asserts that MARLBORO cigarettes have been made and sold by Complainant and its predecessor entities since 1883, with the “modern history of the brand” beginning in 1955. Complainant asserts that it uses and has used the MARLBORO trademark and variations thereof in connection with tobacco and smoking-related products.

Complainant asserts that it has spent substantial time, effort and money advertising and promoting its MARLBORO trademarks throughout the United States and has developed substantial goodwill in the marks. Complainant asserts that the trademarks have become distinctive and are uniquely associated with Complainant and its products. Complainant notes that numerous UDRP panels have already determined that the MARLBORO trademarks are famous.

Complainant asserts that its registrations for the MARLBORO trademarks establish that it has rights in the marks pursuant to paragraph 4(a)(i) of the Policy.

Complainant asserts that the disputed domain names are confusingly similar to its MARLBORO trademarks, as consumers expect that domain names incorporating a company’s name or mark shall lead to a website maintained by or affiliated with the trademark owner. Complainant asserts that the disputed domain names are confusingly similar to its trademarks because the disputed domain names incorporate the word mark in its entirety, and the addition of the generic words “weedman” and “kush” fails to distinguish the disputed domain names from Complainant’s MARLBORO trademarks. To the contrary, Complainant asserts that the combination of Complainant’s MARLBORO trademark and the word “weedman” or “kush” exacerbates public confusion because “weed” and “kush” are slang terms for marijuana, and falsely suggest that Complainant is marketing or intends to market marijuana cigarettes.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has no connection or affiliation with Complainant, its affiliates, or any of the products provided by Complainant under the MARLBORO trademarks. Complainant asserts that Respondent was never known by any name or trade name that incorporates the word “Marlboro”, that Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof, that Respondent has not received any license, authorization or consent to use the MARLBORO trademarks in a domain name or any other manner, and that the WhoIs records associated with the disputed domain names do not identify Respondent by the names “marlboroweedman.com” or “marlborokush.com”. Complainant also asserts that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain, as the disputed domain names point merely to inactive pages under construction.

Complainant asserts that Respondent intentionally misappropriated the MARLBORO mark by including it in the disputed domain names, and that Respondent chose to use Complainant’s trademark to divert Internet users from Complainant’s website by capitalizing on public recognition of the MARLBORO trademarks.

Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain names because it has failed to make any use of the disputed domain names, which merely point to inactive websites.

Complainant asserts that Respondent has registered the disputed domain names in bad faith because it registered the disputed domain names with full knowledge of Complainant’s rights in the MARLBORO trademarks, which long predate Respondent’s registration of the disputed domain names. Complainant asserts that bad faith registration and use of the disputed domain names may be based upon the worldwide fame of the trademarks or service marks to which the disputed domain names are confusingly similar if the registrant has no connection to the corresponding Complainant or its goods or services.

Complainant asserts that Respondent is deemed to have constructive notice of Complainant’s trademark rights by virtue of Complainant’s federal registrations for its MARLBORO trademarks.

Complainant asserts that Respondent’s use of “weed” and “kush” in conjunction with Complainant’s trademark MARLBORO in the disputed domain names tarnishes and dilutes the MARLBORO trademarks because marijuana is unlawful under United States federal law and the law of many states. Prior UDRP panels have held that domain names combining other of complainant’s trademarks with “marijuana” have been registered and used in bad faith because of tarnishment.

Complainant further asserts that Respondent’s registration and use of the disputed domain names create a form of initial interest confusion, which attracts Internet users to the disputed domain names based upon their use of the MARLBORO trademarks.

Complainant asserts that the conclusion of bad faith is bolstered by the fact that the disputed domain names resolve to inactive websites. Complainant asserts that Respondent may be found to be acting in bad faith where, as here, its domain names point to inactive websites and other indicia of bad faith are present, such as misappropriation of a famous trademark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation (Policy, paragraph 4(c)):

“(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 customers or to tarnish the trademark or service mark at issue.”

Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).

The Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of the disputed domain name in bad faith:

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

(ii) [Respondent has] registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <marlborokush.com> and <marlboroweedman.com> are confusingly similar to Complainant’s registered MARLBORO trademarks. 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. See Philip Morris USA Inc. v. Arik Casden., WIPO Case No. D2014-0687.

The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

To satisfy paragraph 4(a)(ii) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once complainant makes its prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(“WIPO Overview 2.0”), Section 2.1.

Complainant has made a prima facie case that Respondent has no connection or affiliation with Complainant. Complainant contends that Respondent was never known by any name or trade name that incorporates the trademark, that Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof, that Respondent has no license, authorization or consent to use the MARLBORO trademarks, and that Respondent is not identified by the names “Marlboroweedman.com” or “Marlborokush.com”. Complainant has also made a prima facie case that Respondent has not used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.

Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. Further, because Respondent failed to file a response, it may be presumed that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Respondent’s conduct in registering the disputed domain names does not fit neatly into any of the factors set forth in paragraph 4(b) of the Policy. However, these factors are not exclusive, and the Panel finds that other facts demonstrate Respondent’s bad faith use and registration of the disputed domain names.

First, numerous UDRP cases have found that Complainant’s MARLBORO mark is famous. See Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. Dinoia, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735; and others. 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. See Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790.

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. SeePhilip Morris USA Inc. v. Arik Casden, WIPO Case No. D2014-0687.

Third, that Respondent is not actively using the disputed domain names is an indicator of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. 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. See WIPO Overview 2.0, Section 3.2 and other cases cited therein.

Taking all of these facts into consideration, the Panel finds that the disputed domain names were registered and are being used 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 names, <marlborokush.com> and <marlboroweedman.com>, be transferred to Complainant.

Jordan S. Weinstein
Sole Panelist
Date: April 11, 2016