WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Tarndeep Singh

Case No. D2015-1033

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 “United States”, “USA” or “US”).

The Respondent is Tarndeep Singh of Girona, Spain.

2. The Domain Name and Registrar

The disputed domain name <marlboro-war.com> is registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, 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 June 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2015.

The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on July 29, 2015. 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. Philip Morris USA Inc. (“PM USA”) has exclusive rights in the MARLBORO trademarks.

4.2. PM USA manufactures, markets, and sells cigarettes in the United States, including cigarettes under its MARLBORO trademarks.

4.3. Marlboro cigarettes have been made and sold by PM USA (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, PM USA has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

4.4. PM USA is the registered owner of the following trademarks (the “MARLBORO Trademarks”), among others, on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”), which are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065:

4.5. PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO Trademarks throughout the United States, and PM USA has thus developed substantial goodwill in the MARLBORO Trademarks. Through such widespread, extensive efforts, the MARLBORO Trademarks have become distinctive and are uniquely associated with PM USA and its products.

4.6. PM USA has registered the domain name <marlboro.com>. This domain name points to PM USA’s website, “www.marlboro.com” (the “MARLBORO Website”), which enables access to information regarding PM USA, Marlboro products, and special offers to age-verified adult smokers 21 years of age or older.

4.7. In this scenario, the Complainant noticed that the disputed domain name <marlboro-war.com> was registered by Respondent. The disputed domain name <marlboro-war.com> redirects toward a multiplayer online role playing game website.

4.8. The Complainant’s MARLBORO trademark was registered in the US in 1908. The disputed domain name was registered on March 5, 2015.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant’s states that the Respondent registered without authorization the disputed domain name <marlboro-war.com> on March 5, 2015.

5.2. Furthermore, the Complainant contends that the disputed domain name <marlboro-war.com> reproduces the trademark MARLBORO with the addition of the generic word “war”. Thus, the mere addition of the generic word “war” does not distinguish the disputed domain name <marlboro-war.com> from PM USA’s MARLBORO Trademarks.

5.3. The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name and that it was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:

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

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

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

6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.

6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.

A. Identical or Confusingly Similar

6.4. Through widespread, extensive use in connection with its products, the MARLBORO Trademarks have become uniquely associated with PM USA and its products, and are well-known.

6.5. The disputed domain name is confusingly similar to the MARLBORO Trademarks. Courts and administrative panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. (Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872).

6.6. Additionally, numerous panels have held that a domain name is confusingly similar to a trademark where, as here, the domain name incorporates the mark in its entirety. For example, in Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 and in Philip Morris USA Inc. v. Mehmet Ali Ciger, WIPO Case No. D2011-1675, the panel found that the domain names <marlboroblackmenthol.com> and <marlboroblack.com> were confusingly similar to PM USA’s MARLBORO Trademarks. ().

6.7. Additionally, it is equally well established that “the adaptation of a recognized trademark in a domain name by the addition or insertion of words or acronyms does not escape a finding of confusing similarity.” (Am. Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055; Philip Morris USA Inc. v. Deep Nuke t/a Lagnit Bali, WIPO Case No. D2012-1037). Thus, the mere addition of the generic word “war” does not distinguish the disputed domain name <marlboro-war.com> from PM USA’s MARLBORO Trademarks. Likewise, the use of the hyphen in the disputed domain name is not a distinguishing factor.

6.8. Finally, as previous panels have found, the addition of a generic Top-Level Domain such as “.com” is typically irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

6.9. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

6.10. The Respondent has no legitimate interests or rights in the disputed domain name nor connection or affiliation with PM USA, its affiliates, or any of the many products provided by PM USA under the MARLBORO Trademarks.

6.11. Additionally, the Respondent was never known by any name or trade name that incorporates the word “Marlboro”. On information and belief, the Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed could never do so given PM USA’s pre-existing and exclusive rights to this mark throughout the United States.

6.12. Moreover, the Respondent has not received any license, authorization, or consent - express or implied - to use the MARLBORO Trademarks in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since.

6.13. Furthermore, the Respondent’s misappropriation of the MARLBORO mark by its inclusion in the disputed domain name is no accident. Clearly, the Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO mark with PM USA’s tobacco products. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus illegitimate users such as the Respondent could have no legitimate interest in the trademark. In fact, a previous panel commented that it was “inconceivable” for the respondent to have a legitimate use of a domain name incorporating the MARLBORO Trademarks “given the longtime use of the MARLBORO Trademarks and strength of its brand.” (Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790).

6.14. Finally, the Respondent’s objective at the outset was to divert Internet users seeking to visit PM USA’s legitimate website to the website at the disputed domain name that has no connection whatsoever with PM USA. Indeed, the Respondent’s content on its website - which includes an opportunity for players to buy points by making a payment through PayPal or credit card - suggests that, upon information and belief, it is capitalizing on the goodwill in MARLBORO Trademarks for its own personal, financial benefit. The Respondent thus is seeking to capitalize on the goodwill and valuable reputation of the MARLBORO Trademarks to lure Internet users to its website. (CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2010-1680).

6.15. For all the above reasons, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Accordingly, the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.16. 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 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 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.

6.17. Given the fame of the MARLBORO Trademarks, it is simply inconceivable that the registrant of the disputed domain name registered it without knowledge of PM USA’s rights. (Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609).

6.18. Even a simple Internet search would have revealed PM USA’s extensive use of the MARLBORO Trademarks as source identifiers for its tobacco products. PM USA’s rights in the MARLBORO Trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online.

6.19. The Panel finds that the Respondent’s use of the disputed domain name - using the exact MARLBORO Trademarks to lure Internet users to its website - demonstrates bad faith use under the Policy. (Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742).

6.20. Finally, the Respondent must have expected that the use given to the disputed domain name would cause harm to PM USA. As one UDRP panel in a WIPO decision found: “By using the domain name that incorporates Complainant’s mark the Respondent may well be able to generate more search hits for its own website, but this mainly appears to suggest that the Respondent is seeking to take unfair advantage of Complainant's goodwill in its mark.” (Intagent LLC v. Dominor LLC, WIPO Case No. D2008-1878). As such, the Respondent’s misappropriation of PM USA’s exact MARLBORO Trademarks evidences the Respondent’s bad faith.

6.21. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith.

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

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 <marlboro-war.com> be transferred to the Complainant.

José Pio Tamassia Santos
Sole Panelist
Date: August 12, 2015