WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Brands Sàrl v. Domain Admin, Whois Privacy Corp

Case No. D2017-2043

1. The Parties

The Complainant is Philip Morris Brands Sàrl of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas.

2. The Domain Names and Registrars

The disputed domain names <marlboro-flavor.com>, <marlboro-packz.com>, <marlboro-pride.com> and <marlboro-taste.com> are registered with Internet Domain Service BS Corp; The disputed domain name <marlboro-prime.store> is registered with TLD Registrar Solutions Ltd..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2017 regarding the disputed domain names <marlboro-flavor.com>, <marlboro-pride.com>, <marlboro‑prime.store> and <marlboro-taste.com>. On October 20, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 25, 2017, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On October 20, 2017, the Complainant requested to add the disputed domain name <marlboro-packz.com> into the Complaint. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <marlboro-packz.com>. On October 27, 2017, 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.

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 the Respondent of the Complaint, and the proceedings commenced on November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 22, 2017.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 27, 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

The Complainant, Philip Morris Brands Sarl, is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as "PMI"). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI's brand portfolio contains the MARLBORO brand.

The Complainant has proven to be the owner of several trademark registrations for the MARLBORO mark.

The Complainant is inter alia the owner of:

Australian Trademark No. 161395 MARLBORO, registered since July 27, 1960, for cigarettes in class 34;

European Union Trademark No. 00075606, MARLBORO registered on October 7, 1998 for tobacco, raw or manufactured; cigarettes, cigars, cigarillos, smoking and chewing tobacco; smokers' articles; matches, in class 34;

International Trademark No. 1285486, MARLBORO registered on December 7, 2015, for raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches, in class 34;

International Trademark No. 1023145, MARLBORO (device) registered on September 28, 2009, for raw or manufactured tobacco; tobacco products, including cigars, cigarettes, cigarillos, handrolling tobacco, pipe tobacco, chewing tobacco, snuff, kretek; snus tobacco; tobacco substitutes (for non-medical use); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco boxes, cigarette cases and smokers' ashtrays, tobacco pipes, pocket machines for rolling cigarettes, smokers' lighters; matches, in class 34;

The disputed domain names were registered by the Respondent between October 13, 2017 and October 16, 2017.

The Complainant's trademark registrations predate the registration of the disputed domain names.

The disputed domain names resolve to pages containing the same message, i.e.: "Herzlich en Glückwunsch! Sie wu rden ausgewählt, um an unserer kurze n Umfrage teilzunehmen, um 5 kostenlose Marlboro Kartons zu erhalten! Wir haben nur 332 Kartons noch so eilig!" ("Congratulations! You have been selected to take our short survey to get 5 free boxes of Marlboro! We only have 332 boxes in such a hurry!), and inviting Internet users to respond to the survey.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the MARLBORO trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Addition of domain names prior to notification of Complaint

As a general rule, domain names held by the same registrant may be added to a complaint before notification to the respondent of the formal commencement of the relevant proceeding (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.12).

In the present case the Complainant has requested the addition of the disputed domain name

<marlboro-packz.com> on October 20, 2017, namely before the official notification of the commencement of the proceeding (i.e., November 1, 2017).

The Panel, therefore, accepts the Complainant's request to address all the disputed domain names in one case.

6.2. Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

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

(ii) The 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. Identical or Confusingly Similar

The Complainant has established rights in the MARLBORO trademark.

The disputed domain names <marlboro-flavor.com>, <marlboro-packz.com>, <marlboro-pride.com>, <marlboro-prime.store> and <marlboro-taste.com> identically reproduce the Complainant's MARLBORO trademark with the addition of terms such as "flavor", "packz", "pride", "prime" and "taste".

It is well established that where the complainant's trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity.

In the present case, all five disputed domain names incorporate the renowned MARLBORO trademark in its entirety with the addition of generic or descriptive terms.

This is not sufficient to prevent a finding of confusing similarity pursuant to the Policy.

Therefore, the Panel finds all the disputed domain names to be confusingly similar to the MARLBORO trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by similar names. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain names.

Finally, this Panel believes the MARLBORO mark, due to its renown, is not one that traders could legitimately adopt for commercial use other than for the purpose of creating an impression of an association with the Complainant.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the Respondent's bad faith pursuant to the Policy.

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the MARLBORO mark when it registered the disputed domain names.

The Respondent's knowledge of the MARLBORO mark is particularly obvious, given the worldwide renown it has acquired, the Respondent's choice to combine the MARLBORO trademark with terms such as "packz" (cigarettes are sold in packs), "flavor", "taste", "pride" and "prime" which are commonly used as a descriptive indication, and given the use of the websites corresponding to the disputed domain names to prominently display the Complainant's trademark.

Therefore, the Panel finds that the Respondent knew of the Complainant's mark and intentionally intended to create an association with the Complainant and its areas of business at the time of registration of the disputed domain names. This is evidence of the Respondent's bad faith registration of the disputed domain names.

In addition, the Respondent's use of the disputed domain names to mislead Internet users into believing that the Complainant is the source of the fake sweepstakes is clear evidence of the Respondent's bad faith use of the disputed domain names.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain names, <marlboro-flavor.com>, <marlboro-packz.com>, <Marlboro‑pride.com>, <marlboro-prime.store> and <marlboro-taste.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: November 29, 2017