WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Oneandone Private Registration, 1&1 Internet Inc. / Marlboro Cemal

Case No. D2016-1279

1. The Parties

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

The Respondents are Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States / Marlboro Cemal of Viran, Turkey.

2. The Domain Name and Registrar

The disputed domain name, <m4rlboro.com>, is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2016, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 15, 2016.

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 Respondents of the Complaint, and the proceedings commenced on July 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 5, 2016.

The Center appointed Leticia Caminero as the sole panelist in this matter on August 9, 2016. 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 language of the Registration Agreement in respect of the disputed domain name is English and the Complaint was filed in English.

4. Factual Background

The Complainant manufactures, markets, and sells cigarettes in the United States, including cigarettes under the MARLBORO trademarks. MARLBORO cigarettes have been made and sold by the Complainant (and various predecessor entities) 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.

Since April 14, 1908, MARLBORO has been registered as a trademark on behalf of the Complainant, along with the Red Roof design since July 25, 1972, before the Principal Register of the U.S. Patent and Trademark Office (“USPTO”).

Previously, UDRP panels already have determined that the MARLBORO trademarks are worldwide well-known (e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

The Complainant has registered the domain name <marlboro.com>, which corresponds to its website “www.marlboro.com”.

The Respondents registered the disputed domain name, <m4rlboro.com>, on March 10, 2016. The disputed domain name is not being used, since it corresponds to an inactive site.

5. Parties’ Contentions

A. Complainant

First, the Complainant states that the disputed domain name, <m4rlboro.com>, is identical or confusingly similar to the MARLBORO trademarks. The disputed domain name contains a misspelling of the MARLBORO trademark, i.e., “m4rlboro”, which includes the number “4” in place of the letter “a”, between the letters “m” and “r”, and is otherwise identical to the MARLBORO word mark. Furthermore, the Complainant argues that the disputed domain name, <m4rlboro.com>, is visually confusingly similar to the MARLBORO mark.

The Complainant mentioned a previous UDRP decision on the domain name misspelling, as for example, RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190 (referring to intentional misspellings as “typosquatting”, which “has consistently been regarded as creating domain names confusingly similar to the relevant mark” and ordering transfer of domain name to complainant).

The Complainant referred to the irrelevance of a generic Top-Level Domain (“gTLD”) name such as “.com” when determining whether a disputed domain name is confusingly similar to a protected mark.

Second, the Complainant states that the Respondents have no legitimate interests or rights in the disputed domain name. The Respondents have no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. On information and belief, the Respondents have never sought or obtained any trademark registrations for “marlboro” or any variation thereof. The Respondents have 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 Respondents registered and began using the disputed domain name, or at any other time since. The Respondents’ use of “Marlboro Cemal” as his, her, or its name and address are deliberately false information included in the WhoIs record and do not confer any legitimate interests or rights in the Respondents. (Aldrich Rockefeller Designs LLC v. JR Rockefeller of Project Youth, WIPO Case No. D2015-0560). The Complainant also notes that, before any notice to the Respondents of this dispute, there is no evidence of the Respondents’ use of, or demonstrable preparations to use, “Marlboro Cemal” in connection with a bona fide offering of goods and services.

The Complainant claims that the Respondents chose to use the Complainant’s trademark to divert Internet users from the Complainant’s website “www.marlboro.com” by capitalizing on the public recognition of the MARLBORO trademarks. The Complainant further cites Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790, where the 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”.

Third, the Complainant declares that the Respondents have registered and are using the disputed domain name, <m4rlboro.com>, in bad faith. The disputed domain name was registered with full knowledge of the Complainant’s rights in the MARLBORO trademarks. This is apparent from the fact that the Respondents’ registration came more than a century later than the disputed domain name, <m4rlboro.com>. Moreover, the Complainant claims that the use of MARLBORO trademarks to divert Internet users demonstrates bad faith use under the Policy. As well, the Respondents’ use of the disputed domain name to resolve to an inactive website reinforces the conclusion of bad faith.

B. Respondents

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) the Respondents have 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.

The Complainant bears the burden of proof on each of these elements. Since the Respondents did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainant must still support its allegations with evidence to succeed in a UDRP proceeding.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <m4rlboro.com>, is confusingly similar to the MARLBORO trademarks to which the Complainant has rights. The substitution of the letter “a” by the number “4” is the only variation between the disputed domain name, <m4rlboro.com>, and the MARLBORO trademarks. This replacement of the letter “a” by the number “4” is common in the Internet, and in this context they are interchangeable. Therefore, the disputed domain name is aurally and visually confusingly similar to the trademarks of the Complainant. The gTLD “.com” is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.

B. Rights or Legitimate Interests

The Panel concludes that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name.

The disputed domain name, <m4rlboro.com>, resolves to an inactive website. There is no evidence that the Respondents, before any notice of the present dispute, used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Registrar-disclosed registrant of the disputed domain name is “Marlboro Cemal”. However, there is no evidence that the Respondents have been commonly known by the disputed domain name. Moreover, there is no evidence that the Respondents are 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 Complainant’s trademarks.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondents had knowledge of the Complainant’s trademark before registration, therefore selected the disputed domain name, <m4rlboro.com>, to take advantage of the Complainant’s trademarks. The MARLBORO trademarks are world-famous and over a century old. Additionally, the Complainant registered the domain name <marlboro.com>, which it uses for its official website “www.marlboro.com”.

The disputed domain name leads to an inactive website, thus being a sign of bad faith, particularly in the present circumstances where the Complainant has a widely known trademark and the Respondents have concealed their identity (see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Panel finds that the Respondents registered and use the disputed domain name in bad faith.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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, <m4rlboro.com>, be transferred to the Complainant.

Leticia Calimero
Sole Panelist
Date: August 23, 2016