WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Nick Howard

Case No. D2010-1009

1. The Parties

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

The Respondent is Nick Howard of Beckenham, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <marlborocountry.com> (the “Disputed Domain Name”) is registered with Advantage Interactive Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2010. On June 18, 2010, the Center transmitted by email to Advantage Interactive Ltd a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010.

On June 29, 2010, the Center received from the Respondent a request for an extension of time within which to file a Response, which was agreed to by the Complainant in its email of June 30, 2010. On July 1, 2010, the Center informed the parties that the due date for the filing of a Response has been extended to July 17, 2010.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 19, 2010.

The Center appointed William P. Knight as the sole panelist in this matter on July 26, 2010. 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 a number of trademarks incorporating the word “Marlboro” in the United States and the domain name <marlboro.com>. The Complainant is a well- known manufacturer and supplier of tobacco products, being in a business supplying products under trademarks incorporating the word “Marlboro” since, or the successor in title to a business using such trademarks begun in, 1883. The Complainant has for many years promoted its products using as a campaign motif the words “Marlboro Country” in conjunction with images of the American west, including cowboys and horses. The Panel has no hesitation in finding MARLBORO and MARLBORO COUNTRY to be well-known marks.

In its correspondence seeking an extension of time to file a response, the Respondent has stated that he has been in control of the Disputed Domain Name for over 10 years. A search of the Disputed Domain Name on “www.archive.org” (“the Wayback Machine”) shows the Disputed Domain Name has been in use since February 29, 2000, generally as a parking website, for the most part including a links to “Cheap Cigarette” [sic], “MarlboroCigs for the USA” and the like but now featuring an image of an American desert scene with the words “DOMAIN FOR SALE A HUGE EXPANSE WAITING TO BE DEVELOPED”.

On March 12, 2010, the Complainant's attorney sent a letter to the Respondent, both by courier and by email requiring that he transfer the Disputed Domain Name to the Complainant and cease any use of the Complainant's trademarks. No reply was received.

5. Parties' Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is confusingly similar to its well-known and distinctive trademark MARLBORO. The Complainant observes that the addition of the word “Country” does nothing to distinguish the Disputed Domain Name, and indeed aggravates the deception by reason of the connection to the Complainant's MARLBORO COUNTRY promotion and trademark rights, nor does the addition of the gTLD suffix “.com” serve to distinguish the Disputed Domain Name.

The Complainant further asserts that the Respondent is not licensed by it and has never shown any legitimate use of the Disputed Domain Name. The only use made of the Disputed Domain Name, the Complainant argues, has been to offer it for sale.

The Complainant argues that it is “inconceivable” that the Respondent could have been unaware of the trademark significance of the Disputes Domain Name and of the Complainant's rights in its trademarks, simply by virtue of the international reputation of the Complainant and its MARLBORO trademarks going back many decades. In those circumstances, the Complainant concludes, the registration, and the subsequent use of the Disputed Domain Name simply to attract offers for purchase of it, is “paradigmatic” bad faith.

The Complainant cites many compelling authorities in support of the propositions that it makes which the Panel does not repeat here.

The Complainant requests that the Disputed Domain Name is transferred to it.

B. Respondent

The Respondent did not reply to the Complainant's contentions other than, in his request for an extension of time to reply, stating that “My intention was to build a ‘marlboro country fan club' site as it is a truly a [sic] visually outstanding area of America, and lots of beautiful imagery to share. If anybody wanted it in the meantime I wanted them to know it was available. I was not aware Philip Morris owned the rights to this area of America. From my knowledge it was just a creative campaign a long while ago.”

6. Discussion and Findings

A. Identical or Confusingly Similar

For the reasons argued by the Complainant, the Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trademark MARLBORO.

B. Rights or Legitimate Interests

Again, on the grounds submitted by the Complainant, the Panel also finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the Disputed Domain Name has been registered and is being used in bad faith.

In this case, there is more than a strong prima facie case that the Disputed Domain Name was acquired and is being maintained solely for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name.

Furthermore, the actual use of the Disputed Domain Name shown by using the Wayback Machine demonstrates clearly that the Respondent was aware of the Complainant and has used the Disputed Domain Name for a ‘parking' website to attract, for commercial gain, Internet users to the website under the Disputed Domain Name, by creating a likelihood of confusion with the Complainant's trademarks. Such Internet users are then diverted to some other website offering cigarettes.

Plainly, this is behaviour listed as showing bad faith in paragraph 4(b)(i) and (iv) of the Policy.

Whilst not a formal response, in fairness to the Respondent his protestations in his request for an extension of time are noted. The suggestion that he wanted to build a “Marlboro Country Fan Club” must be taken with a grain of salt, however, given that the image displayed on his website is that of a desert in the American west, whereas the beautiful Marlboro Country to which he refers could only be Marlboro County in South Carolina, a very different part of the world.

For these reasons, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For all 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, <marlborocountry.com> be transferred to the Complainant.

William P. Knight
Sole Panelist

Dated: July 29, 2010