WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Snow Potion, Nicolas Michaelsen

Case No. D2014-1270

1. The Parties

1.1 The Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, (the “Complainant”) represented by Arnold & Porter, United States of America.

1.2 The Respondent is Snow Potion, Nicolas Michaelsen of Copenhagen, Djibouti, (the “Respondent”) and unrepresented.

2. The Domain Name and Registrar

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

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2014. On July 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On July 24, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 28, 2014.

3.2 The Center verified that the Complaint together with the amendment to 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”).

3.3 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 July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2014.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 28, 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

4.1 The Complainant in this administrative proceeding is Philip Morris USA Inc. a corporation organized under the laws of the Commonwealth of Virginia with its principal place of business in Richmond, Virginia United States. The Complainant manufactures, markets and sells cigarettes in the United States including cigarettes under its famous MARLBORO trademarks. The Complainant is said to have manufactured and sold Marlboro cigarettes to various entities since 1883 with the modern history of the brand commencing in 1955. The Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking – related products for several decades. The Complainant is the registered owner of the following trademarks among others on the Principal Register of the U.S. Patent and Trademark Office which are still valid and subsisting namely:

4.2 In addition, the Complainant is said to have spent substantial time, effort and money, advertising and promoting the MARLBORO trademarks throughout the United States. The Complainant has thus developed substantial goodwill through such widespread and extensive efforts as the trademarks have become distinctive and uniquely associated with the Complainant’s products. The Complainant has also registered the domain name <marlboro.com> which points to its website at “www.marlboro.com” where information regarding the Complainant’s tobacco and smoking-related products is displayed.

4.3 The Respondent in this administrative proceeding is Nicholas Michelsen, Snow Potion based at “Copenhagen v, Djibouti”. He is recorded as having registered the disputed Domain Name <greenmarlboro.com>, through the Registrar GoDaddy.com LLC on January 24, 2014 according to the Registrar’s verification response. The disputed Domain Name resolves to a Godaddy parking website which displays sponsored links.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed Domain Name <greenmarlboro.com> is confusingly similar to the Complainant’s MARLBORO trademarks, and asserts that through widespread and extensive use in connection with its products the MARLBORO trademarks have become uniquely associated with the Complainant and its products throughout the United States. The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.1 which submits that ownership of a registered trademark satisfies the threshold requirement of trademark rights. The Complainant therefore submits that its registration of the MARLBORO trademark establishes prima facie proof of a right under paragraph 4(a) (i) of the Policy. The Complainant argues further, that Courts and UDRP panels have long recognized that consumers expect domain names incorporating a company’s name or mark to resolve to a website maintained by or affiliated with the trademark owner. In support the Complainant refers to a previous UDRP decision in Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872..

5.2 The Complainant argues further that where as in this case, the disputed Domain Name incorporates the Complainant’s trademark in its entirety numerous other UDRP panels have upheld a finding of confusing similarity see Philip Morris USA Inc., v. Pieropan, WIPO Case No. D2011-1735 and Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675 where the disputed Domain Name, as in this case, consisted of the combination of the Complainant’s trademark MARLBORO and the name of a color. Finally, the Complainant contends that the mere addition of the generic Top-Level Domain “.com” does not typically prevent a finding of confusing similarity.

5.3 The Complainant contends that the Respondent has no legitimate interests or rights in the disputed Domain Name by asserting that the Respondent had no connection or affiliation with the Complainant, its affiliates, or any of the other products marketed by the Complainant under the MARLBORO trademarks. It is said that the Respondent was never known by any name or trade name that incorporates the word “marlboro”, and neither has the Respondent ever been licensed, authorized or permitted to use the MARLBORO trademarks in a domain name or in any other manner. The Complainant further asserts that the Respondent deliberately chose to use the Complainant’s MARLBORO trademark to attract Internet users to his directory websites by exploiting the public recognition of the MARLBORO trademark. It is said that the Respondent’s objective from the outset was to divert Internet users seeking to visit the Complainant’s legitimate website in the United States. With reference to the decision in CIMB Group Sdn. Bhd., v. PrivacyProtect.org, WIPO Case No. D2010-1680, the Complainant submits that the registration of a domain name for the purposes of misleading or diverting consumers cannot give rise to rights or legitimate interests in the disputed Domain Name.

5.4 On the question of bad faith registration and use, the Complainant first asserts that given the fame of the Complainant’s trademarks it is inconceivable that the Respondent registered the disputed Domain Name without knowledge of the Complainant’s established rights following a number of previous decisions including Philip Morris USA Inc., v. Davit Papyan, NAF Claim No. 1402001544649 and Philip Morris USA Inc. v. I HOSTING, WIPO Case No. D2007-1609. In support of this contention the Complainant submits that a simple Internet search or a basic domain name search or searches at available Patent and Trademark offices online would have revealed the Complainant’s extensive rights in the MARLBORO trademark. Secondly, the Complainant asserts that it believes that the Respondent registered the disputed Domain Name for pecuniary reasons to trade on the goodwill of the Complainant in the MARLBORO trademark by obtaining revenue each time an Internet user clicks on any of the links displayed on the Respondent’s directory website. With reference to Dr. Martens International Trading GmbH v. Private WhoIs Service, WIPO Case No. D2011-1191 the Complainant submits that such conduct exemplified by seeking to derive click-through revenue by exploiting the likelihood of confusion of Internet users is evidence of bad faith use. Finally, the Complainant submits that the Respondent’s method of infringement indicated by using the Complainant’s exact MARLBORO trademark to divert adult smokers from the Complainant’s website demonstrates bad faith under the Policy.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interest in respect of the disputed Domain Name; and (iii) the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three requirements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 The Panel finds the disputed Domain Name <greenmarlboro.com> to be confusingly similar to the Complainant’s well-known trademark in the cigarette and tobacco industry. Undoubtedly, the disputed Domain Name wholly incorporates the Complainant’s MARLBORO trademark and the mere addition of a word denoting a colour such as “green” and the generic Top-Level Domain “.com” does absolutely nothing to prevent a finding of confusing similarity. As argued by the Complainant, previous UDRP decisions have long affirmed that it is sufficient to establish the requirement of confusing similarity under the Policy where a disputed domain name wholly incorporates a complainant’s trademark. See generally, Bayerische Motoren Werke AG v. bmw.car.com, WIPO Case No. D2002-0615. More particularly, see similar previous UDRP cases involving the Complainant such as Philip Morris USA Inc. v. Pieropan, supra where the disputed domain name <marlboroblackmenthol.com> was found to be confusingly similar to the Complainant’s trademarks and in addition Philip Morris USA Inc. v. Ciger, supra where the disputed domain name <marlboroblack.com> was found to be confusingly similar to the Complainant’s trademarks.

6.4 In the circumstances, the Panel is satisfied that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 Secondly, the Panel also finds that the Respondent has failed to provide any evidence of circumstances required to establish that there are any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant submits, the Respondent has not been authorized or licensed or permitted by the Complainant to utilize or register the disputed Domain Name. The Panel is also satisfied that the Respondent has no connection or affiliation with the Complainant’s MARLBORO trademark or as asserted by the Complainant; that the Respondent has ever been known by any name or trade name which incorporates the MARLBORO mark. As found in previous UDRP decisions, the burden of proof lies on the Respondent to establish the existence of any rights or legitimate interests in the disputed Domain Name, where a prima facie case has been established by the Complainant. See generally, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. The Panel accepts as contended by the Complainant that the Respondent deliberately chose to exploit the Complainant’s MARLBORO trademark for purposes of: (a) diverting Internet users seeking to visit the Complainant’s legitimate website to his website (b) deriving click – through revenue from the likelihood of confusion from Internet visitors who visit his website. Accordingly, the Panel is satisfied that none of these activities confers any rights or legitimate interests in the disputed Domain Name nor can such conduct or activity be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed Domain Name as stipulated in the decision in Oki Data Americas, Inc. v.ASD, Inc, WIPO Case No. D2001-0903. The Panel also finds that the decision in CIMB Group Sdn. Bhd., CIMB–Principal Asset Management Berhard v. PrivacyProtect.org/Cyber Domain Services Pvt.Ltd, supra referred to by the Complainant also relevant in the circumstances in so far as the panel in that case found that the registration of a domain name for the purposes of misleading or diverting consumers cannot give rise to rights or legitimate interests in a disputed domain name.

6.6 In the circumstances, the Panel is satisfied that the Complainant has established that the Respondent does not have any rights or legitimate interests in the disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 As regards the issue of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use. In the first instance, the Respondent must have been aware or must be deemed to be aware of the Complainant’s well-known exclusive rights in the MARLBORO trademark. As it is put by the Complainant, it is simply inconceivable that the Respondent had no prior knowledge of the existence of the extensive rights of the Complainant before deciding to register the disputed Domain Name on January 24, 2014. In support of the Complainant’s submission in this regard, see a previous UDRP decision in Philip Morris USA Inc., v. ADN HOSTING, supra where the panel observed that it was inconceivable that the respondent in that case did not know of the MARLBORO trademarks before registering the disputed domain name <marlborofactory.com>. The Complainant is correct to observe that a simple Internet search would have revealed the Complainant’s extensive rights in the MARLBORO trademark as evidenced by the federal trademark registrations attached to this Complaint. Secondly, the Panel finds that the Complainant has established that the Respondent intentionally registered the disputed Domain Name to divert Internet users from the Complainant’s legitimate websites and in addition to obtain commercial gain from click-through revenue by exploiting the likelihood of confusion, by Internet users with the Complainant’s MARLBORO trademark. Without any hesitation, the Panel finds such activity and or conduct is clear evidence of bad faith registration and bad faith use following the decision in Dr Martens International Trading GmbH v. Private WhoIs Service, supra. Thirdly, as observed in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond and rebut the evidence and contentions of the Complainant in this matter.

6.8 The Panel is therefore satisfied that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use.

7. Decision

7.1 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, <greeenmarlboro.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Date: September 1, 2014