WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Carlos Santos

Case No. D2015-1478

1. The Parties

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

The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Carlos Santos of Rio de Janeiro, Brazil.

2. The Domain Name and Registrar

The disputed domain name <marlboroboi.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2015, 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 Complainant filed an amended Complaint on August 25, 2015.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2015.

The Center appointed Andrea Dawson as the sole panelist in this matter on September 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

The Complainant manufactures, markets, and sells cigarettes in the United States and worldwide.

The Complainant provides evidence demonstrating its ownership of the trademark MALBORO and indicates that MARLBORO cigarettes have been made and sold by the Complainant since 1883, with the modern history of the brand beginning in 1955.

For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

The Complainant is the owner of the registered domain name <marlboro.com>.

The disputed domain name <marlboroboi.com> was registered on May 11, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <marlboroboi.com> is confusingly similar to the Complainant’s trademark.

The Complainant states that the Respondent has no legitimate interests or rights in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word “Marlboro”. 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.

The Complainant further indicates that several UDRP panels have found that when a respondent, fails to make any use of the disputed domain name, merely pointing that domain name to an inactive website, such respondent has no rights or legitimate interests in the domain name.

The Complainant states that there is no doubt that the Respondent’s conduct is in bad faith, considering the disputed domain name is identical to the Complainant’s trademark. The Complainant further states that there is no doubt that the Respondent was aware of Complainant’s rights in the MARLBORO trademark, given the fame and notoriety of the same being simply inconceivable that the Respondent had no knowledge of the Complainant’s prior rights in the trademark.

Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and used the disputed domain name in bad faith. The Complainant requests that the Panel orders transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(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 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 Complainant has been able to demonstrate that it has rights to the trademark MARLBORO.

The disputed domain name consists of the term “Marlboro”, with the addition of random letters “b”, “o” and “”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of random letters to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.

Furthermore, the Complainant is the owner of the domain name <marlboro.com>, being the only difference with the disputed domain name the addition of the letters “b”, “o” and “i”".

For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name.

The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the disputed domain name.

Furthermore, the Panel finds that the Respondent is neither commonly known by the name “Marlboro” or “Marlboroboi” nor in any way affiliated with the Complainant, nor authorized or licensed in any other way to use the MARLBORO trademark.

The Respondent has not provided any proof that he is using the disputed domain name in connection with a bona fide offering of goods or services; nor is there proof that he 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.

Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the MARLBORO trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

“Marlboro” is not a common term in any language. The Panel finds that it is implausible to conclude that the Respondent did not have the Complainant’s trademark in mind when registering the disputed domain name, since the MARLBORO mark is a well-known and famous trademark. It is unlikely that the Respondent was unaware of Complainant when it registered the disputed domain name.

In addition to the above, the disputed domain name does not resolve to any active website, allowing this Panel to conclude that the use of the disputed domain name is not for any legitimate or noncommercial use, but for no use at all, which in accordance to many prior UDRP panels allows for the inference of registration and use in bad faith.

For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <marlboroboi.com> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: October 5, 2015