WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Emmanuel Rodriguez

Case No. D2018-1219

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA” or “US”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, USA / Emmanuel Rodriguez of Jersey City, New Jersey, USA.

2. The Domain Name and Registrar

The disputed domain name <marlboropartners.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2018, 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 June 6, 2018.

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 June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018. The Center received an informal email communication from the Respondent on June 11, 2018. On June 29, 2018, the Center notified the Parties that the Center will proceed to Panel Appointment. On July 9, 2018, the Center received an informal email communication from the Respondent.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 19, 2018. 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 is a business corporation organized under Virginia law and headquartered in the Commonwealth of Virginia, USA. Altria Group, Inc., the Complainant’s parent company, is a publicly traded corporation listed on the New York Stock Exchange. According to the parent company’s website at “www.altria.com”, the Complainant has been the largest US tobacco manufacturer for more than 30 years, and MARLBORO is one of its leading brands.

The Complainant or its predecessors have sold cigarettes under the MARLBORO trademark since 1883. The Complainant holds US Trademark Registration Number 68,502 for MARLBORO as a standard character mark (registered April 14, 1908). The Complainant operates a website at “www.marlboro.com”. Given the long history of advertising, media articles, sports sponsorships, and successful sales associated with the trademark, several UDRP panels have concluded that MARLBORO is a famous mark in the United States. See, e.g., Philip Morris USA Inc. v. Branden Marks, WIPO Case No. D2017-0349.

The Domain Name was registered on February 4, 2018 in the name of a privacy service. After this dispute arose, the service identified the real party in interest as the Respondent, an individual residing in Jersey City, New Jersey, USA. The Domain Name has not been used to date for an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its MARLBORO trademark, for which the Respondent has no permission to use in the Domain Name and in which the Respondent has no rights or legitimate interests. The Complainant relies on the “passive use” doctrine first articulated in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, to infer bad faith despite the lack of an active website associated to date with the Domain Name, as the selection of a domain name so obviously based on a very well-known trademark strongly suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent sent an informal email to the Center saying only, “I am unsure of what this correspondence entails. This account was initially generated as a cloud for organization, was not used beyond setup, was closed a month ago, and will no longer be used.” (The Respondent did not then reply to the Center’s email informing the Parties that they could suspend the proceedings for 30 days to explore settlement.)

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds a registered MARLBORO trademark. The Domain Name incorporates this mark and adds “partners”. The Panel does not find that this generic addition avoids confusing similarity with the well-known and distinctive mark.

The first element of a UDRP complaint serves essentially as a standing requirement and entails a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 3.0, section 2.1.

Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies any association with the Respondent. The Respondent has not asserted any rights or legitimate interests in the Domain Name, and none are evident from the Domain Name itself or from any use of the Domain Name. The Panel concludes, therefore, that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. The Complainant does not rely on these illustrations, as the Respondent has not done anything with the Domain Name to date.

Instead, the Complainant infers bad faith from the Respondent’s registration of the Domain Name based on a well-known trademark to which the Respondent has no legitimate claim, masking the Respondent’s identity behind a domain privacy service and making no active use of the Domain Name. The Complainant relies on the “passive holding” doctrine that infers bad faith from the lack of plausible alternative reasons for a silent respondent to have registered and maintained a domain name that is based on a well-known and distinctive trademark other than, ultimately, to exploit the mark. See WIPO Overview 3.0, section 3.3.

That reasoning is persuasive in this instance, because it is hard to imagine what legitimate reason the Respondent could have for registering and holding the Domain Name incorporating the Complainant’s well-known mark along with a generic business term. The statement in the Respondent’s informal email that the “account” was “initially generated as a cloud for organization” does not offer any satisfactory explanation for what appears to be the targeting of a valuable brand name. Absent a more cogent explanation, the probabilities favor “opportunistic bad faith” within the meaning of the Policy, paragraph 4(b).

The Panel concludes on this record that the third element of the Policy, bad faith, has been established.

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 Domain Name <marlboropartners.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: July 24, 2018