The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0149326835 / Contact Privacy Inc. Customer 0149328537 / Contact Privacy Inc. Customer 0149328538 of Toronto, Canada / Name Redacted1.
The disputed domain names <marlboro-filter.online>, <marlboro-filter.org> and <marlboro-filter.space> are registered with Tucows Inc. (the “Registrar”).
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 Registrar a request for registrar verification in connection with the disputed domain names. On June 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 12, 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 12, 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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. On June 21, 2018, the Center received an email communication from the named Respondent’s representative stating that the Respondent has no connection to the disputed domain names and that it has no opposition to the relief requested by the Complainant. The Complainant requested by email the suspension of the proceeding to reach a settlement agreement on June 25, 2018. The Center notified to the Parties the suspension of the proceeding on the same day. On July 6, 2018, the Center received an email communication from Respondent stating that a third party used its name without its knowledge to register the disputed domain names. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel’s attention and that it is the Panel’s role to decide her claim regarding identity theft. The Complainant requested by email the reinstitution of the proceeding on July 10, 2018. The Center notified the Parties the reinstitution of the proceeding on July 11, 2018. On July 24, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed William F. Hamilton as the sole panelist in this matter on August 1, 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.
The Complainant is the owner of numerous trademark registrations in the United States Patent and Trademark Office (“USPTO”) for the mark MARLBORO (the “Mark”) dating back over a century, including Reg. No. 0068502, registered on April 14, 1908. The Complainant has heavily invested in the promotion of the Mark is association with its tobacco products. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“[…] the MARLBORO trademark is famous worldwide”). The Complainant has also registered the domain name <marlboro.com>.
The disputed domain names <marlboro-filter.online>, <marlboro-filter.org>, and <marlboro-filter.space> were registered on September 28, 2017. The disputed domain name <marlboro-filter.online> resolves to an inactive page. The disputed domain name <marlboro-filter.space> redirects to <marlboro-filter.org>. The disputed domain name <marlboro-filter.org> resolves to a website displaying the message “We’re under construction. Please check back for an update soon”.
The Complainant contends the disputed domain names are confusingly similar to the Mark because the disputed domain names are composed by adopting the Mark in its entirety followed by the single generic term “filter”. The Complainant asserts that the Respondent has no rights or legitimate interests in the Mark or the disputed domain names, and that the disputed domain names were registered and used in bad faith to attract unsuspecting Internet users to the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds the disputed domain names are confusingly similar to the Complainant’s Mark.
The disputed domain names incorporate the entire Mark and merely append to the Mark the descriptive term “filter”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 Here, the Mark is clearly recognizable in each of the disputed domain names. The differing generic Top-Level domains (“gTLDs”) are immaterial and do not dispel the confusing similarity between the Mark and the disputed domain names.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has specifically disavowed providing the Respondent with any permission or license to use the Mark or the disputed domain names. The Respondent has not come forth to demonstrate any bona fide activities or business associated with the Mark or the disputed domain names. There is no evidence or indication that the Respondent was ever commonly known by any of the disputed domain names. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The Panel finds that the disputed domain names were registered and used in bad faith.
It strains credulity to believe that the Respondent happened by chance to simultaneously compose and register the three disputed domain names that fully incorporate the Complainant’s Mark and add a descriptive term as a suffix that is related to Complainant’s products sold under the Mark. The only feasible explanation for Respondent’s registration of the disputed domain names is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain names. Accordingly, any use of the disputed domain names for an actual website could only be in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That the disputed domain names do not resolve to an active website is immaterial to this finding of bad faith registration and use. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (section 3.3 of the WIPO Overview 3.0).
The Panel additionally notes that the Respondent has made a compelling case that the disputed domain names were registered by unknown persons who made unauthorized use of the Respondent’s contact information. Registration in such circumstances is clear evidence of bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Pane orders that the disputed domain names <marlboro-filter.online>, <marlboro-filter.org> and <marlboro-filter.space> be transferred to the Complainant.
William F. Hamilton
Date: August 5, 2018
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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