WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc., v. Auston Dicus

Case No. D2014-0328

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 Auston Dicus of Hebron, Kentucky, United States of America.

2. The Domain Name and Registrar

The disputed domain name <marlborous.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2014. On March 4, 2014, the Center transmitted by email to the Registrar 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 March 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2014.

The Center appointed William R. Towns as the sole panelist in this matter on April 11, 2014. 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, headquartered in Richmond, Virginia, manufactures and sells tobacco products, including cigarettes sold under the MARLBORO trademark. The Complainant has used the MARLBORO mark with tobacco and smoking related products since as early as 1883, and obtained its first United States registration for the mark in 1908 (Reg. No. 68,502). The Complainant has since obtained further trademark registrations for MARLBORO in the United States and in other countries around the world, including a word plus design registration issued by the United States Patent and Trademark Office (“USPTO”) in 1972 (Reg. No. 938,510), which incorporates the Complainant’s distinctive “red roof” logo. As consistently recognized in prior decisions of UDRP panels, through extensive and widespread use the MARLBORO mark has become one of the most famous marks in the world.¹

The disputed domain name <marlborous.com> was registered by the Respondent on July, 17, 2013, according to information maintained by the concerned Registrar in its WhoIs database. The disputed domain name does not presently resolve to an active website, but the Complainant has submitted evidence that the disputed domain name previously pointed to a website entitled “Top News Stories”, comprised of links to current news articles on the websites of various news organizations.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is confusingly similar to the distinctive and well-known MARLBORO mark, in which the Complainant has established exclusive rights. The Complainant explains that the disputed domain name is confusingly similar because it incorporates the MARLBORO mark in its entirety. Further, according to the Complainant, the additional letters “us” do not distinguish the disputed domain name from the MARLBORO mark. The Complainant submits that the disputed domain name is either an intentional misspelling of the mark (“typosquatting”), or that Internet users may mistake “marlborous.com” for an official MARLBORO site dedicated to U.S. (“us”) based customers, exacerbating the confusion.

The Complainant asserts that the Respondent has no legitimate interests or rights in the disputed domain name. The Complainant avers that the Respondent has not been authorized to use the MARLBORO mark, and that the Respondent has not been commonly known by the disputed domain name. The Complainant contends that the Respondent is not making a legitimate commercial or noncommercial use of the disputed domain name, but to the contrary has misappropriated the MARLBORO mark in order to trade off the Complainant’s mark and misleadingly divert Internet users to the Respondent’s website. The Complainant alleges that the Respondent has obtained revenues from ads displayed with news stories on linked third party websites.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant maintains that the Respondent was fully aware of the Complainant’s rights in the MARLBORO mark when registering the disputed domain name, and at a minimum is charged with constructive knowledge of the Complainant’s registered MARLBORO marks. According to the Complainant, the Respondent has engaged in the bad faith practice of typosquatting, and has further used the disputed domain name in bad faith to trade on the goodwill of the Complainant’s MARLBORO mark by luring Internet users to the Respondent’s website, in order obtain revenue from ads displayed with the news stories on third-party sites linked to the Respondent’s website. Even if the Respondent is passively holding the disputed domain name, the Complainant asserts that it is inconceivable that the Respondent could make a legitimate use of the disputed domain name given the Complainant’s longtime and exclusive use of the MARLBORO marks and the strength of the brand, citing Philip Morris USA Inc. v. Private, WIPO Case No. D2005-0790, and Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <marlborous.com> is confusingly similar to the Complainant’s MARLBORO mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the letters “us” in the Panel’s view does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and is evocative of typosquatting. See Philip Morris USA Inc. v. Deep Nuke t/a Lagnit Bali, WIPO Case No. D2012-1037.

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

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s MARLBORO mark. The disputed domain name, however, incorporates the Complainant’s mark in its entirety, and the Respondent, while making no active use of the disputed domain name since the filing of the Complaint, previously used the disputed domain name to divert Internet consumers to the Respondent’s website.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is apparent to the Panel that the Respondent was aware of the Complainant’s MARLBORO mark when registering the disputed domain name, given that Complainant’s mark is highly distinctive and well-known. The Respondent, without the Complainant’s authorization, registered a domain name incorporating the Complainant’s distinctive and well-known MARLBORO mark, has used the disputed domain name to divert Internet users to the Respondent’s website, and is now passively holding the disputed domain name.

In the absence of any explanation by the Respondent, the Panel considers it a reasonable inference from the record as a whole that the Respondent registered the disputed domain name intending to exploit and profit from the goodwill and reputation of the Complainant’s MARLBORO mark by diverting Internet traffic to the Respondent’s website. Nor in the circumstances of this case does the Respondent’s present passive holding of the disputed domain name support any claim of legitimacy. See Philip Morris USA Inc. v. Private, supra; Telstra Corporation Limited v. Nuclear Marshmallows, supra .

Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

In light of this, the Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted earlier, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

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

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent plainly was aware of the Complainant’s MARLBORO mark when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes from the record that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s rights.

That the Respondent now appears to be passively holding the disputed domain does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, supra, are present in this case as well. The Complainant’s mark is distinctive and well-known, and is not susceptible to use in a generic sense. As in Telstra Corporation Limited v. Nuclear Marshmallows, supra, there is no evidence of any actual good faith use of the disputed domain name by the Respondent, or of any demonstrable preparations to make a good faith use of the disputed domain name.

Accordingly, the Panel finds that the Complainant have satisfied the requirements of 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 name <marlborous.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 24, 2014

¹ See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790; Philip Morris USA Inc. v. Cooltobacco.com akalgor Rodionov, WIPO Case No. D2005-0245; Philip Morris USA Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. Sylvester Spinetta, WIPO Case No. D2004-0317.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.