WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Administrator, China Capital Domain Fund Limited; Domain Administrator, Eastern Valley Limited

Case No. D2018-1280

1. The Parties

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

The Respondent is Domain Administrator, China Capital Domain Fund Limited of Hong Kong, China; Domain Administrator, Eastern Valley Limited of Hong Kong, China.

2. The Domain Names and Registrars

The disputed domain names <marbloblack.com>, <marborloblack.com>, <marlborablack.com>, <marlboriblack.com>, <marlbrorblack.com> and <wininstantlyatmarlboro.com> are registered with NameSilo, LLC; the disputed domain names <marboro-us.com> and <marlbro-us.com> are registered with Site Matrix LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2018. On June 8, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 8, 2018 and June 13, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 14, 2018, the Complainant submitted an amended Complaint upon the Center’s deficiency notification.

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 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 12, 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.

On July 24, 2018, the Panel issued an Administrative Panel Procedural Order to the Parties requesting further information regarding the status of the Complainant’s replied-upon trademarks. On July 25, 2018, the Complainant submitted supplemental filings upon the Panel’s request. The Respondent did not comment on the documents filed by the Complainant by the specified due date.

4. Factual Background

The Complainant – Philip Morris USA Inc. (“PM USA”) is the owner of Marlboro, a well-known cigarette brand that has been ranked as one of the world’s most well-known cigarette brands since 1972. Marlboro cigarettes represented 43.3% of the USA cigarette market in 2017.

The Complainant is the owner of numerous trademarks for MARLBORO, including:

- USA Trademark MARLBORO (semi-figurative), No. 68502, registered April 14, 1908, duly renewed for services in class 34;

- USA Trademark MARLBORO (word), No. 3365560, registered January 8, 2008 for services in class 34;

- USA Trademark MARLBORO (word), No. 3419647, registered April 29, 2008 for services in class 34.

The Complainant is also the owner of numerous domain names incorporating its MARLBORO trademark: <marlboro.com> and <marlboro.net>.

The eight disputed domain names were registered between July 2017 and April 2018 and resolve to websites with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant assets that all of the eight disputed domain names are operated or controlled by a single Respondent, and subsequently invites the Panel to exercise its discretion under paragraph 10(e) of the Rules to consolidate the multiple domain name disputes presented by the Complainant in this proceeding.

The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s well-known and reputable MARLBORO trademark, as each of the disputed domain names contains the Complainant’s trademark or a variation thereof and common, descriptive and geographical terms such as “win instantly at”, “black” and “us”.

The Complainant further argues that there are no rights or legitimate interests held by the Respondent in respect of the disputed domain names. The Respondent does not have any business or legal relationships with the Complainant. The Respondent is not sponsored nor affiliated with the Complainant in any way, nor does the Respondent have any authorization from the Complainant to register the disputed domain names or any domain name corresponding to the MARLBORO Trademark.

The Complainant contends that the Respondent has registered and uses the disputed domain names in bad faith. The Complainant asserts that there can be no doubt that the Respondent knew or should have known that the Complainant has rights to the MARLBORO trademarks when registering the disputed domain names. The Complainant also argues that the association of the MARLBORO trademark and the term “black”, which refers to one of the Complainant’s products, made by the Respondent in the disputed domain names constitutes further evidence of the fact that the Respondent knew that the Complainant has rights to the MARLBORO Trademarks. The Complainant contends that the Respondent is using the disputed domain names to resolve to websites featuring pay-per-click links to third party websites featuring competing products, and furthermore asserts that the Respondent is trying to sell the disputed domain names, evidencing bad faith.

For all the above reasons, the Complainant requests the transfer of the eight disputed domain names.

B. Respondent

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

6. Discussion and Findings

A. Consolidation

Under paragraph 10(e) of the Rules, panels are empowered to consolidate multiple domain name disputes when it favours the shared interests of the parties in avoiding unnecessary duplication of time, effort and expenses, and when it reduces the potential for conflicting or inconsistent results arising from multiple proceedings (see MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc, WIPO Case No. D2009-0985).

Consistent with previous UDRP panels’ decisions, multiple domain name registrants under common control may be subject to consolidation and, therefore, treated as one single respondent for the purposes of the Policy and Rules (see Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragaon d/b/a Creative Genius Domain Name Sales, WIPO Case No. D2001-0729). UDRP panels have notably found multiple respondents to be commonly controlled in the event of similarities in the registrants’ contact information including email addresses (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 4.11.2).

As all eight disputed domain names share the same email address, as confirmed by the concerned Registrars, the Panel finds that the Complainant has established more likely than not that the two named Respondents are either the same organization or under common control. Consequently, the Panel grants the Complainant’s request for consolidation and refers to the Respondent in singular form.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark for which the Complainant has rights.

The Complainant has submitted evidence of its prior rights on the MARLBORO sign in the form of trademarks.

The disputed domain names cited below represent a deliberate misspelling of the Complainant’s MARLBORO trademark and are considered confusingly similar to the Complainant’s trademark.

The disputed domain names <marbloblack.com>, <marborloblack.com>, <marlborablack.com>, <marlboriblack.com>, and <marlbrorblack.com> contain the Complainant trademarks MARLBORO misspelled and the generic term “black”. More specifically, the disputed domain names have misspelled the Complainant’strademark as follows:

The disputed domain name <marbloblack.com> – the “l” and the “b” have been transposed and the “ro” at the end is dropped;

The disputed domain name <marborloblack.com> – the “l” was placed after the second “r”;

The disputed domain name <marlborablack.com> – the second “o” was replaced with an “a”;

The disputed domain name <marlboriblack.com> – the second “o” was replaced with an “i”;

The disputed domain name <marlbrorblack.com> – the first “o” was dropped and an “r” is added at the end.

Furthermore, the term “black” is used by the Complainant to identify one of its product lines named “Marlboro Black”. Thus, the addition of the descriptive term “black” does not take away the trademark’s distinctiveness and individuality, thus making the disputed domain names confusingly similar to the Complainant Trademarks under the Policy paragraph 4(a)(i).

The disputed domain names <marboro-us.com> and <marlbro-us.com> contain the Complainant trademarks MARLBORO misspelled and the geographic term “us”, which refers to the country the Complainant’s company was incorporated. More specifically, the disputed domain names have misspelled the Complainant trademarks as follows:

The disputed domain name <marboro-us.com> – the “l” was dropped;

The disputed domain name <marlbro-us.com> – the first “o” was dropped.

This conduct, commonly referred to as “typosquatting”, creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.

The disputed domain name <wininstantlyatmarlboro.com> is a combination of the Complainant MARLOBORO trademarks and the generic terms “win instantly at”, thereby making the Disputed Domain Name confusingly similar to the Complainant trademarks under Policy paragraph 4(a)(i).

According to previous UDRP panels, an addition of generic words does not prevent confusion. The incorporation of a complainant's well-known trademark in the registered domain name is considered sufficient to find that the domain name is confusingly similar to the complainant’s trademark: see QuixtarInvestments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 (finding that because the domain name <quixter-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTER, the domain name is confusingly similar).

Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled for the eight disputed domain names.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed 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) 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.

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Respondent is not commonly known by the disputed domain names, which evinces a lack of rights or legitimate interests (see Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766) in the disputed domain names.

Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. “In the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Names could reasonably be claimed” (See LEGO Juris A/S v. DomainPark Ltd,David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).

The Panel notes that the disputed domain names redirect to “parking pages” which contain a number of third party links, including links that resolve to pages related to the Complainant’s business. Previous UDRP panels have already stated that “while parking pages may be permissible in some circumstances, […], a parking page would not by itself confer rights or legitimate interests in a domain name. This is especially the case where a disputed domain name was registered with a trademark owner’s mark in mind in the hope and expectation that confused Internet users searching for the trademark owner will be directed to the Respondent’s parking page for commercial gain” (See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726).

For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent has registered and is using the disputed domain names in bad faith.

The Panel finds that the Respondent must have been aware of the Complainant and its reputation related to the MARLBORO trademarks at the time of registering the disputed domain names. Previous UDRP panels have already stated that MARLBORO has a worldwide reputation. “The fame of the MARLBORO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain names without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith” (See Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2452).

The Complainant has submitted evidence showing that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the MARLBORO trademark since 1908. The fact that the MARLBORO trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names attests to the Respondent’s bad faith in these particular circumstances (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with lack of credible explanation for the Respondent’s choice of the disputed domain names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The disputed domain names fall into the category stated above and the Panel finds that the registration is in bad faith.

By registering multiple domain names that contain the Complainant’s MARLBORO trademark in its entirety, with an addition of other generic terms and by misspelling trademark, the Respondent created domain names that are confusingly similar to the Complainant’s trademark, as well as its <marlboro.com> domain name. Typosquatting itself represents an evidence of bad faith registration that was found by past UDRP panels. See WIPO Overview 3.0 at 3.1.4: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

Moreover, the Respondent is currently offering the disputed domain names for sale, which constitutes bad faith under Section 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain names for valuable consideration in excess of its out-of-pocket expenses. The Panel cannot find any justification for the registration and use of the disputed domain names in such circumstances except that the Respondent has registered and uses the disputed domain names for the purpose of selling the disputed domain names for valuable consideration in excess of the Respondent’s documented out-of-pocket costs and/or to disrupt the Complainant’s business.

Moreover, the Respondent uses the website in bad faith as it is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. This is without doubt an evidence of use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith under paragraph 4(a)(iii) of the Policy.

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 names, <marbloblack.com>, <marborloblack.com>, <marboro-us.com>, <marlborablack.com>, <marlboriblack.com>, <marlbrorblack.com>, <marlbro-us.com> and <wininstantlyatmarlboro.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: August 3, 2018