WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-1109

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <marlboro-cigarettes.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2019, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2019, 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 May 16, 2019.

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 May 17, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was June 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2019.

The Center appointed Jon Lang as the sole panelist in this matter on June 18, 2019. 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’s first use in commerce of its MARLBORO trademark was in 1883. It is the owner of numerous trademark registrations (for MARLBORO) within the United States including United States Patent and Trademark Office (“USPTO”) Registration Number 68,502 with a Registration Date of April 14, 1908.

The Respondent registered the Domain Name on February 4, 2019. The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant's business. The Respondent’s website also features a link that directly references the Complainant and its business.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the Complainant’s main contentions.

The Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights.

The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and as a result has developed substantial goodwill in such trademarks. The MARLBORO trademarks have become distinctive and uniquely associated with the Complainant and its products.

The Complainant has registered the domain name <marlboro.com> which points to its United States website at “www.marlboro.com”. In addition, the Complainant owns the <marlboro.net> domain name.

When comparing the Domain Name to the Complainant’s trademarks, the comparison to be made is between only the second-level portion of the Domain Name and marks.

In creating the Domain Name, the Respondent has added the generic, descriptive term “cigarettes” to the Complainant’s MARLBORO trademark, thereby making it confusingly similar to the Complainant’s trademark. That such term (“cigarettes”) is closely linked and associated with the Complainant’s brand and trademark (MARLBORO has been the global best-selling cigarette brand since 1972), only serves to underscore and increase confusing similarity. The Respondent’s addition of a hyphen does not diminish such confusing similarity.

The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The granting of registrations by the USPTO to the Complainant for the MARLBORO trademark is prima facie evidence of the validity of the term MARLBORO as a trademark, of the Complainant’s ownership of such trademark and of the Complainant’s exclusive right to use the MARLBORO trademark in commerce on or in connection with the goods and/or services specified in the registrations.

The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant's business. The Respondent’s website also features a link that directly references the Complainant and its business. It is assumed that the Respondent receives pay-per-click fees from such linked websites.

The Respondent is not using the Domain Name to provide a bona fide offering of goods or services, or for the purposes of a legitimate non-commercial or fair use.

The Respondent registered the Domain Name on February 4, 2019, significantly after the Complainant’s first use in commerce of its trademark in 1883, significantly after the Complainant filed for registration of its MARLBORO trademark with the USPTO, and significantly after the Complainant’s registration of its <marlboro.com> domain name on March 6, 2000.

The Domain Name was Registered and is Being Used in Bad Faith

The Complainant and its MARLBORO trademark are well-known, with numerous USPTO trademark registrations. The Complainant has marketed and sold its goods using the trademark since 1883, well before the Respondent’s registration of the Domain Name on February 4, 2019.

By registering a domain name that includes the Complainant’s famous MARLBORO trademark in its entirety, along with the phrase “cigarettes”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the Domain Name was registered.

MARLBORO is so closely linked and associated with the Complainant, that the Respondent’s use of the MARLBORO trademark, or any minor variation thereof, strongly implies bad faith.

Given that the Domain Name includes the term “cigarettes”, it defies common sense to believe that the Respondent coincidentally selected the precise domain name it did, without any knowledge of the Complainant and its trademarks.

At the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks, and that registration of domain names containing well-known trademarks constitutes bad faith per se.

Given that the Complainant has marketed and sold goods using the MARLBORO trademark since 1883, (demonstrating the Complainant’s enormous fame), the Respondent was or should have been aware of the Complainant's trademarks prior to registering the Domain Name.

It is believed that by registering and using the Domain Name, the Respondent is intentionally attempting to attract Internet users to its website where it offers pay-per-click links for commercial gain and is thereby demonstrating bad faith for the purposes of the Policy.

The Respondent is creating a likelihood of confusion with the Complainant and its trademarks by registering a domain name that incorporates the Complainant’s MARLBORO trademark in its entirety, paired with the related term “cigarettes”. This demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website to which it resolves. By creating this likelihood of confusion between the Complainant’s trademarks and the Domain Name (leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name), the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the website to which the Domain Name resolves for the Respondent’s own pecuniary gain (as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website).

The Respondent, at the time of the initial filing of the Complaint, employed a privacy service to hide its identity, which past UDRP Panels have held serves as further evidence of bad faith registration and use.

On balance, it is more likely than not, that the Respondent knew of and targeted the Complainant’s trademark and the Respondent should be found to have registered and used the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in its MARLBORO trademark.

Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the MARLBORO trademark but adds the word “cigarettes” afterwards, separating the two components of the Domain Name by a hyphen.

Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The MARLBORO trademark is clearly recognizable within the Domain Name. The addition of “-cigarettes” does not prevent the Domain Name from being confusingly similar to the MARLBORO trademark.

The Panel finds that the Domain Name is confusingly similar to the MARLBORO trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name resolves (featuring links to third-party websites some of which directly compete with the Complainant's business and which also features a link that directly refers to the Complainant and its business), it cannot be said that there is legitimate non-commercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s famous MARLBORO trademark with the addition of a word describing the very products associated with the Complainant and its trademark, (thus enhancing rather than reducing the risk of confusion), suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party (and in some cases, competitor) websites. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.

The Respondent has sought to create an impression of association with the Complainant for commercial ends and it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it.

The Respondent was clearly aware of the Complainant’s MARLBORO trademark at the time of registration and has sought to create a misleading impression of association with the Complainant in its choice of the Domain Name. It must have known that Internet users looking for the website of the Complainant may well end up at any website to which the Domain Name resolves. It can only be assumed that the Respondent derives (or has the opportunity to derive) some commercial benefit from the click-through revenue generated by the website to which the Domain Name presently resolves. It is incumbent on a registrant of such an obviously confusingly similar domain name, to come forward and seek to justify its registration if it is to avoid an adverse finding. The Respondent has not done so. The circumstances of this Complaint mirror the example of circumstances described above (taken from paragraph 4(b) of the Policy) as being illustrative of bad faith registration and use.

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboro-cigarettes.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: July 1, 2019