WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Online Management

Case No. D2014-0798

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 Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <marlborocountynews.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2014, 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 May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 13, 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 manufactures, markets and sells cigarettes. The Complainant (and various predecessor entities) have manufactured and sold cigarettes under the trademark MARLBORO since 1883 with the modern history of the brand beginning in 1955. The Complainant states that it has used the MARLBORO trademark and variations of it in connection with its tobacco and smoking related products for many decades.

The Complainant is the registered proprietor of the following United States (“U.S.”) registered trademarks which it relies on (“the MARLBORO trademarks”):

- U.S. registered trademark No. 68,502 for MARLBORO in international class 34 for cigarettes registered on April 14, 1908.

- U.S. registered trademark No. 938,510 for the MARLBORO and Red Roof design for cigarettes in international class 34 for cigarettes registered on July 25, 1972.

The Complainant states that it has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States, and that it has developed substantial goodwill in those trademarks. It further states that through such widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products.

The Complainant points to a number of decisions of previous UDRP panels which have found that the Complainant’s MARLBORO trademarks are famous worldwide. See for example:

- Phillip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”).

- Phillip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (“The Complainant has not filed any direct evidence of its rights in the Trademark outside of the U.S. but the Panel has no hesitation in finding that the Trademark is a well-known trademark worldwide as held by many other panels”).

The Complainant is the owner of the domain name <marlboro.com>. That domain name hosts the Complainant’s website which enables access to information regarding the Complainant, MARLBORO products, and makes special offers to age-verified adult smokers 21 years of age and older.

The disputed domain name <marlborocountynews.com> was created on September 22, 2013 (the “Relevant Date”). The identity of the actual respondent was concealed at the time of registration by a privacy/proxy service. The Respondent’s actual identity was revealed as a consequence of this proceeding being brought. The Panel observes that the Respondent has been the subject of at least eight adverse decisions of previous UDRP panels resulting in the transfer or cancellation of various domain names, including:

- The Net-a-porter Group Limited v. Online Management LTD., a/k/a Online Resource Management Ltd., WIPO Case No. D2013-1403.

- Clarins v. Online Management / Registration Private, WIPO Case No. D2013-1862.

- Avid Dating Life Inc. v. Registration Private, Domains by Proxy, LLC / Online Management, WIPO Case No. D2014-0460.

- Reckitt Benckiser Plc v. Registration Private, Domains by Proxy, LLC / Online Management, WIPO Case No. D2013-1488.

- F. Hoffmann-La Roche AG v. Online Management, WIPO Case No. D2013-2028.

- Sanofi v. Online Management/Registration Private, Domains by Proxy, LLC, WIPO Case No. D2013-2212.

- Alliedbarton Security Services LLC v. Registration Private, Domains by Proxy, LLC, domainsbyproxy.com; Domain Admin, PrivacyProtect.org / Online Management; ICS INC., WIPO Case No. D2014-0036.

- Tommy Behalo Group, Inc. v. Domains by Proxy, LLC/Online Management, WIPO Case No. D2013-1631.

Evidence filed by the Complainant shows that, as at May 7, 2014 the disputed domain name resolved to an error message that stated “an error has occurred”. However, the case file supplied by the Center including details of service on the Respondent shows that as at May 19, 2014 the disputed domain name resolved to a landing page containing sponsored links, as well as displaying the text “BUY THIS DOMAIN; the domain marlborocountynews.com may be for sale by its owner!”. This use continues. The landing page also contained a list of links including titled “Daily Herald Newspaper”, and “Express Newspaper”. Those links did not direct to any external website corresponding to the link names, but rather linked to another page within the website hosted at “www.marlborocountynews.com”, containing various dynamically updating sponsored links including to third party commercial websites. These were:

- “www.headlinealley.com”, which offer, for free download a toolbar for searching various Internet news sites; and

- “www.lassoo.co.nz”, the website of a New Zealand based media strategy and buying agent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the trademark MARLBORO as at the Relevant Date, including by way of its U.S. registered trademarks in international class 34. Each of these registered trademarks well predates the Relevant Date. The Complainant’s trademark was also well-known not only in the United States but also worldwide as at that date, as also found by previous UDRP panels in the decisions listed earlier.

The Panel considers that the Complainant’s MARLBORO trademark is clearly recognizable within the disputed domain name and that the additional text “countynews” does not sufficiently differentiate the disputed domain name from the Complainant’s trademark so that threshold confusion will not arise.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made 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) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) that 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 overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant states, and the Panel accepts, that it has never given the Respondent any licence, authority or consent to use the MARLBORO trademarks, and the Respondent is not related in any way to the Complainant’s business or products provided under the MARLBORO trademarks. The Complainant further states that the WhoIs record associated with the disputed domain name does not identify the Respondent by the name “marlborocountynews”.

In the circumstances, including where the disputed domain name is not being used to host any substantive content, but rather to host a landing page containing sponsored links, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

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

(ii) that the Respondent has 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) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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 the Respondent’s website or location.

As already stated, the Complainant has trademark registrations in the United States for MARLBORO which well pre-date the Relevant Date and prior to that date were well known in both the U.S. and worldwide. The Panel finds that the Respondent must have been aware of the Complainant’s MARLBORO trademarks at the time of registration of the disputed domain name. The history of previous UDRP panel decisions against the Respondent shows that the Respondent has a track record of registering domain names incorporating other party’s trademarks. In circumstances where the Respondent has failed to respond, the Panel is entitled to draw adverse inferences from that failure.

The Panel is therefore satisfied that the disputed domain name was registered in bad faith.

As to the second limb of the third element, the Panel is also satisfied that the disputed domain name is being used in bad faith. Although at the time of the Complaint, the disputed domain name appeared to have resolved to a blank page, in fact the full record of the Complaint (including the service details provided by the Center) demonstrates that the disputed domain name in fact leads to a landing page. As noted earlier, this is linked to another page within the same website which hosts sponsored links. These in turn will likely generate pay-per-click revenue for the Respondent.

The Panel agrees with the Complainant that use of the disputed domain name containing the well-known MARLBORO trademark is likely to create initial interest confusion, i.e. attracting Internet users to the disputed domain name. But further, the landing page with its sponsored links shows that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to source or affiliation with that location.

The Panel also draws adverse inferences from the Respondent’s failure to respond and to the fact that the Respondent used a privacy/proxy service to conceal its identity (Fifth Third Bancorp v Secure Whois Info. Serve.,WIPO Case No. D2006-0696).

The Panel therefore finds that both limbs of this third requirement have been satisfied on the facts.

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 <marlborocountynews.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: June 26, 2014