Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Contact Privacy Inc. Customer 1242362991 and Customer 1242362992 of Toronto, Canada / Jaquanta Mcrae of Raeford, North Carolina, United States.
The disputed domain names <marlboroblacks.com> and <marlborosblack.com> (the "Domain Names") are registered with Google Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 12, 2018.
The Center verified that the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 9, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 17, 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 August 20, 2018, Respondent sent a brief email communication to the Center indicating "I was sent a letter stating that a complaint was filed against me and I need more information. I have no affiliation with your company at all or the city of Toronto, Ontario, Canada". The Center acknowledged receipt of the communication and provided Respondent with all relevant information.
Complainant is the owner of many trademark registrations within the United States, including the following MARLBORO trademarks:
April 14, 1908
April 29, 2008
Numerous UDRP panels have determined that Complainant's MARLBORO trademarks are famous. See Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous worldwide"); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 ("Respondent creates a likelihood of confusion with the Complainant's famous trademark and deprives the Complainant from offering its products to prospective clients"); Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735 ("finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels"); Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263 (noting the "worldwide renown" of the MARLBORO trademarks); and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (recognizing the fame of the MARLBORO trademarks).
Complainant has registered the domain name <marlboro.com>, which points to Complainant's website at "www.marlboro.com". The site enables access to information regarding Complainant, its Marlboro products, and special offers to age-verified adult smokers 21 years of age or older. In addition, Complainant owns the domain name registration for <marlboro.net>.
Respondent registered the Domain Names <marlboroblacks.com> and <marlborosblack.com> on March 7, 2018. The Domain Names do not resolve to active websites.
Complainant states that by virtue of its federal trademark and service mark registrations, Complainant is the owner of the MARLBORO trademarks. Complainant further states that it has spent substantial time, effort, and money advertising and promoting its MARLBORO marks throughout the United States, and has thus developed substantial goodwill in the marks. Through such widespread, extensive efforts, the MARLBORO marks have become distinctive and are uniquely associated with Complainant and its products. As noted above, previous UDRP panels have recognized that the MARLBORO trademark is famous worldwide.
Complainant contends that one of the Domain Names captures Complainant's MARLBORO trademark in its entirety and simply adds the descriptive term "blacks" to the end of the mark, while the other Domain Name also captures Complainant's MARLBORO mark in its entirety, adding the letter "s" and the term "black" to the end of the trademark. Complainant asserts that such descriptive additions to its MARLBORO trademark make the Domain Names confusingly similar to Complainant's trademark. The fact that such terms are closely linked and associated with Complainant's brands and trademarks only serves to underscore and increase the confusing similarity between the Domain Names and Complainant's trademarks. In particular, "black" is a term that refers to a type of MARLBORO cigarettes manufactured, sold, distributed, imported and exported by Complainant worldwide. Complainant urges that these additions to Complainant's trademark do not negate the confusing similarity between the Domain Names and Complainant's trademark. It is well established that the addition of other terms to recognizable trademarks is not sufficient to overcome a finding of confusing similarity pursuant to Policy, paragraph 4(a)(i).
Complainant states that the granting of registrations by the United States Patent and Trademark Office ("USPTO") to Complainant for the MARLBORO trademark is prima facie evidence of the validity of the term MARLBORO as a trademark, of Complainant's ownership of this mark, and of Complainant's exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the mark's registration.
Complainant contends that Respondent is not commonly known by the Domain Names, which evinces a lack of rights or legitimate interests. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's MARLBORO trademark. The pertinent WhoIs information does not resemble the Domain Names in any manner – thus, Complainant argues that where no evidence, including the WhoIs records for the Domain Names, suggests that Respondent is commonly known by the Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Names within the meaning of the Policy, paragraph 4(c)(ii).
Complainant explains that Respondent is using the Domain Names to redirect Internet users to websites that resolve to blank pages and lack content. Respondent has failed to make use of the Domain Names' websites and has not demonstrated any attempt to make legitimate use of the Domain Names and websites, which evinces a lack of rights or legitimate interests in the Domain Names, as confirmed by numerous past panels.
Complainant asserts that Respondent registered the Domain Names on March 7, 2018, which is significantly after Complainant filed for registration of its MARLBORO trademark with the USPTO, and also significantly after Complainant's first use of its trademark in commerce in 1883. Respondent also registered the Domain Names significantly after Complainant's registration of its <marlboro.com> domain name on March 6, 2000.
Complainant states that its MARLBORO trademark is well-known with numerous USPTO trademark registrations. Complainant has marketed and sold its goods using this trademark since 1883, which is well before Respondent's registration of the Domain Names on March 7, 2018. By registering the Domain Names that include Complainant's famous MARLBORO trademark in its entirety along with the terms "black" and "blacks", Respondent has created domain names that are confusingly similar to Complainant's trademark. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant's brand and business. In light of the facts set forth within this Complaint, Complainant argues that it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant's brands at the time the Domain Names were registered. Stated differently, MARLBORO is so closely linked and associated with Complainant that Respondent's use of this mark, or any minor variation of it, strongly implies bad faith.
Complainant further asserts that, in addition to the numerous trademarks filed in connection with Complainant's business prior to Respondent's registration of the Domain Names, Complainant has marketed and sold goods using the MARLBORO trademark since 1883, which demonstrates Complainant's enormous fame. Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's marks, and thus having registered the domain in bad faith, where the complainant's mark is well-known and the circumstances support such a finding, as is the case here.
Complainant asserts that the Domain Names currently resolve to inactive sites and are not being used, though past panels have noted that the word bad faith "use" in the context of the Policy, paragraph 4(a)(iii), does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). In this case, the Domain Names are confusingly similar to Complainant's trademarks, and Respondent has made no use of them, factors which should be considered in assessing bad faith registration and use.
Complainant also emphasizes that Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held can support an inference of bad faith registration and use. Finally, on balance of the facts set forth above, Complainant argues that it is more likely than not that Respondent knew of and targeted Complainant's trademark, and Respondent should be found to have registered and used the Domain Names in bad faith.
Respondent did not reply to Complainant's contentions.
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
The Panel finds that Complainant has established rights in its well-known MARLBORO trademark, based on its trademark registrations and use of the mark in the United States and elsewhere. Indeed, Complainant has strong rights in its well-known MARLBORO mark.
Further, the Panel determines that the Domain Names are confusingly similar to the MARLBORO mark. The Domain Names incorporate the mark in its entirety, while merely adding the descriptive terms "black" (and the letter "s") or "blacks," respectively, which correspond to one of Complainant's branding variations for its MARLBORO tobacco products. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8 ("Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element").
Accordingly, the Panel finds that that the Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element".
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant's contentions. The Panel finds that Complainant has not authorized Respondent to use its MARLBORO trademark; that Respondent is not commonly known by either of the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the Domain Names are linked to blank webpages. Respondent's use of the Domain Names in this manner does not give rise to any right or legitimate interest in them. See Regeneron Pharmaceuticals, Inc. v. Ron Smith, WIPO Case No. D2017-0219 (finding that "Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark … [when] the disputed domain name resolves to an inactive webpage").
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel determines that the Domain Names were registered and are being used in bad faith. First, based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known MARLBORO mark, and targeted that mark, when it registered the Domain Names. The Panel observes that Respondent registered the Domain Names, each of which incorporates Complainant's distinctive MARLBORO trademark in its entirety along with the words "black" or "blacks." Given the fame of the MARLBORO trademark and the fact that the Domain Names are so obviously connected with Complainant's mark (and one of Complainant's branding variations), the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its MARLBORO mark when registering the Domain Names. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is "so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith"); see also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878 ("Knowledge and targeting [of a trademark] may be proven inferentially").
Moreover, Complainant indicated that the Domain Names each connect to blank webpages, while Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity. While each of these factors, on its own, might be insufficient to demonstrate bad faith use of a domain name, in this case, where the Domain Names are confusingly similar to Complainant's well-known MARLBORO trademark, and where there is no conceivable non-infringing use of them, the Panel considers that these factors weigh in favor of bad faith use. See also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see WIPO Overview 3.0, section 3.3 ("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"); and WIPO Overview 3.0, section 3.6 ("Panels have also viewed a respondent's use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith"). Moreover, the Panel finds that the composition of the Domain Names (i.e., Complainant's trademark plus terms connected to one of Complainant's branding variations) effectively impersonates or suggests sponsorship or endorsement by Complainant.
In conclusion, in this case, where Respondent failed to submit a reply to Complainant's contentions, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <marlboroblacks.com> and <marlborosblack.com>, be transferred to Complainant.
Christopher S. Gibson
Date: September 10, 2018
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