WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc v. Domain Admin / DA Privacy Ltd

Case No. D2014-1134

1. The Parties

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

Respondent is Domain Admin / DA Privacy Ltd of Panama City, Marbella, Panama.

2. The Domain Name And Registrar

The disputed domain name <buying-tax-free-marlboro-cigarettes.com> is registered with CommuniGal Communication Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 7, 2014.

The Center appointed Francine Tan as the sole panelist in this matter on August 14, 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

Complainant manufactures, markets, and sells cigarettes in the United States, including cigarettes under its MARLBORO trade marks. Cigarettes have been made and sold under the MARLBORO trade mark by Complainant (and various predecessor entities) since 1883. For many decades, Complainant has used the MARLBORO trade mark and variations thereof in connection with its tobacco and smoking-related products.

Complainant is the registered owner of the MARLBORO trade mark and MARLBORO & Red Roof design mark under United States. Registration Nos. 68,502 and 938,510, respectively.

Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trade marks throughout the United States, and has thereby developed substantial goodwill therein. Through such widespread, extensive efforts, the MARLBORO trade marks have become famous and are uniquely associated with Complainant and its products. Complainant cited earlier UDRP cases in support of its assertion that many UDRP administrative panels have determined that the MARLBORO trade marks are famous.

Complainant registered the domain name <marlboro.com> on March 6, 2000. This domain name points to Complainant’s website, “www.marlboro.com”, which enables access to information regarding Complainant’s MARLBORO products and special offers to age-verified adult smokers 21 years of age or older.

The disputed domain name points to “www.ww1.buying-tax-free-marlboro-cigarettes.com”(“Respondent’s website”), a directory site that includes links to various categories of websites, including websites advocating smoking cessation, selling wholesale cigarettes, and selling “cheap cigarettes”. Complainant believes that these are pay-per-click links and Respondent receives revenue when Internet users click on these links.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusingly similar to its famous MARLBORO trade marks as it incorporates the word MARLBORO in its entirety. The mere additions of the generic terms “buying-tax-free” and “cigarettes” do not distinguish it from Complainant’s MARLBORO trade marks. The MARLBORO mark is readily recognizable within the disputed domain name and the use of the word “cigarettes” in the disputed domain name exacerbates the confusion.

Secondly, Respondent has no rights or legitimate interests in the disputed domain name and this is demonstrated by the fact that Respondent has no connection or affiliation with Complainant or its affiliates, nor with its products; Respondent has never been known by any name that incorporates the word MARLBORO; and Respondent has not been licensed, authorized or permitted to use the MARLBORO trade marks in a domain name or in any other manner. Further, the WhoIs records does not identify Respondent by the name “buying-tax-free-marlboro-cigarettes.com”.

Thirdly, Respondent has registered the disputed domain name in bad faith. It incorporates Complainant’s MARLBORO mark with the phrase “buying-tax-free” and the word “cigarette” with full knowledge of Complainant’s rights in its famous MARLBORO mark. The use of the privacy protection service in the registration of the disputed domain name is further evidence of both bad faith registration and use. Respondent seeks by Respondent’s website to lure adult smokers by the creation of initial interest confusion. Respondent also seeks to trade on Complainant’s goodwill by obtaining revenue from the pay-per-click advertisements displayed on Respondent’s website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion And Findings

A. Identical or Confusingly Similar

Complainant has satisfied the requirement of establishing that it has trademark rights in MARLBORO. The Panel finds the disputed domain name to be confusingly similar to the MARLBORO trade mark as it is clearly identifiable within the disputed domain name and this is made all the more clear with the inclusion of the reference to “cigarettes” (the very type of product sold by Complainant) and the enticement presented by the words “buying-tax-free”.

As for the generic Top-Level Domain (gTLD) “.com”, it has long been held that this element in the domain name may be disregarded when considering the issue of confusing similarity.

In the circumstances, the Panel finds that the first requirement under paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. It includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services; or

(2) being commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

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

For the purposes of paragraph 4(c) of the Policy, Complainant is only required to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)). Once Complainant has presented a prima facie case, the burden shifts to Respondent to submit evidence which proves it has rights or legitimate interests in the disputed domain name.

The Panel is satisfied that Complainant has provided prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name nor is there evidence of a legitimate noncommercial or fair use of the disputed domain name in connection with a bona fide offering of goods or services. In fact, the specific choice of the generic terms found in the disputed domain name reflects a clear intention to mislead and divert consumers for commercial gain, with the enticement of a buying Marlboro cigarettes duty-free.

Respondent has failed or chosen not to file a response to demonstrate its rights or legitimate interests in the disputed domain name.

In the circumstances and in the absence of contrary evidence, the Panel finds that Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds from the case submitted by Complainant that the disputed domain name was registered and used in bad faith. The circumstances of this case fall within the example of what would constitute evidence of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

As is set out in paragraph 3.2 of the WIPO Overview 2.0, “Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.” Furthermore, in the case of American Express Marketing & Development Corp. v. Gabriyel Akbulut, WIPO Case No. DME2010-0003, it was held that: “Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See e.g.,Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.”

The Panel agrees that the MARLBORO trade mark is a well-known mark and is clearly, from the choice of text in the disputed domain name, one that Respondent knew of and deliberately incorporated in the disputed domain name. The aim was undoubtedly to attract and divert Internet traffic to the website by creating confusion with Complainant’s mark.

For the foregoing reasons, the Panel agrees that there has been bad faith registration and use of the disputed domain name by Respondent.

In the circumstances, the Panel finds that Complainant has established the third element of paragraph 4(a) 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 <buying-tax-free-marlboro-cigarettes.com> be transferred to Complainant.

Francine Tan
Sole Panelist
Date: August 25, 2014