WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Gustavo Winchester / Whois Agent and Your Jungle Privacy Protection Service

Case No. D2014-1833

1. The Parties

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

The Respondent is Gustavo Winchester, Brazil, / Whois Agent and Your Jungle Privacy Protection Service, Colorado Springs, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cigarettesmarlboro.net> is registered with DomainNetwork.ca Inc (aka bellnames / namepal.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2014. On October 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 30, 2014.

The Center verified that the amended 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 November 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2014.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 8, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Philip Morris USA Inc., a United States company that has been in the cigarettes business since many decades, with several trademarks including the famous trademark MARLBORO.

The Complainant owns several trademark registrations for MARLBORO, among which:

- United States Trademark Registration No. 68,502 for MARLBORO, registered on April 14, 1908;

- United States Trademark Registration No. 938,510 for MARLBORO and Red Roof design, registered on July 25, 1972.

The Complainant provided evidence in support of the above.

The disputed domain name <cigarettesmarlboro.net> was registered on May 3, 2014. At the time of filing of the Complaint, the disputed domain name resolved to a directory website with pay-per-click links to cigarette-related subject matter.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <cigarettesmarlboro.net> is confusingly similar to its trademark MARLBORO.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark within the concerned website, nor is it commonly known by the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose to attract Internet users for commercial gain by creating confusion with the Complainant’s trademark.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed 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 in respect of the disputed domain name; and

(iii) 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 is the owner of the trademark MARLBORO both by registration and acquired reputation and that the disputed domain name <cigarettesmarlboro.net> is confusingly similar to the trademark MARLBORO.

Regarding the addition of the generic word “cigarettes”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “cigarettes” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.net”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g.,VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant shifts the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

Should the products sold on the websites at the disputed domain names be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise user confusion.

According to the majority view in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:

“A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to corner the market in domain names that reflect the trademark.”

This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

In the present case, there are links to competing products, as well as unrelated “gold” and health services. Thus, there is no basis for the Respondent to claim that that the use of a confusingly similar domain name could somehow be legitimate.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy, has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) that [the respondent has] registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark MARLBORO in the field of cigarettes is clearly established and the Panel finds that the Respondent clearly knew that the disputed domain name <cigarettesmarlboro.net> was confusingly similar to the Complainant’s trademark. This is also confirmed by the fact that the word added to the Complainant’s trademark MARLBORO in the disputed domain name, namely “cigarettes”, is referring to the Complainant’s business activity.

In fact, the disputed domain name is also used in bad faith since in the relevant website there are pay-per-click links mainly referring to the cigarettes (including competitors) and the Respondent is therefore knowingly taking advantage from user confusion.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <cigarettesmarlboro.net> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 18, 2014