WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Brandon Marhal

Case No. D2019-1272

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 Brandon Marhal, United States.

2. The Domain Name and Registrar

The disputed domain name <marlborojointettes.com> (the “Disputed 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 June 4, 2019. On June 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2019.

The Respondent wrote emails to the Complainant dated June 13 and 18, 2019; on June 20, 2019, the Complainant requested the suspension of the proceedings for 30 days to allow the Parties to attempt settlement. On the same day, the Center suspended the proceedings until July 20, 2019. Due to the Respondent’s unresponsiveness to the settlement process, on July 19, 2019, the Complainant requested that the Center reinstitute the proceedings. The Center confirmed the reinstitution of the proceeding in the same day, and the due date for Response was July 24, 2019. No further communication was received from the Respondent. On July 26, 2019, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Lynda M. Braun as the sole panelist in this matter on July 31, 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 is a company that began in 1847 when Philip Morris opened a single shop on London’s Bond Street, which sold tobacco and ready-made cigarettes. By 1983, the Complainant grew to become the one of the largest cigarette manufacturers in the United States in terms of revenue and market share. The Complainant’s most famous brand is MARLBORO cigarettes.

The Complainant owns the following trademarks that are registered in the United States Patent and Trademark Office (“USPTO”): MARLBORO, United States Registration No. 68, 502, registered on April 14, 1908 for cigarettes; (hereinafter, collectively, the “MARLBORO Mark”).

The Complainant has valuable trademark rights in its MARLBORO Mark and uses these trademarks in connection with its MARLBORO cigarettes and tobacco products. The Complainant registered the domain name <marlboro.com>, which resolves to the Complainant’s website at “www.marlboro.com”. The Complainant also owns the domain name <marlboro.net>.

The Disputed Domain Name was registered on April 27, 2019, many years after the Complainant first received registration of its MARLBORO Mark with the USPTO in 1908 and also significantly after the Complainant’s first use in commerce of its MARLBORO Mark in 1883. The Respondent is currently using the Disputed Domain Name to direct Internet users to a website that resolves to a landing page that states: “website coming soon! Please check back soon to see if the site is available”. The page lacks other content, demonstrating that the Disputed Domain Name is currently being used passively.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, except for its email communications dated June 13 and 18, 2019 in which the Respondent appeared to be willing to transfer the Disputed Domain Name to the Complainant.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i) - (iii)):

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the MARLBORO Mark based on longstanding use as well as its trademark registrations for the MARLBORO Mark in the United States. The Disputed Domain Name consists of the MARLBORO Mark in its entirety followed by the word “jointettes”¹, and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other iterms. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.

Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its MARLBORO Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy for the reasons set forth below.

First, the Disputed Domain Name was registered long after the Complainant’s MARLBORO Mark. The Panel finds it almost impossible that the Respondent did not have the Complainant’s MARLBORO Mark in mind when registering the Disputed Domain Name.

Second, with respect to the use of the Disputed Domain Name, passive holding does not prevent a finding of bad faith. By using the Disputed Domain Name passively and having no content on its web page other than stating that the website would be coming soon, the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).

Third, the Disputed Domain Name harms and tarnishes the Complainant’s MARLBORO Mark. The use of the word “jointettes” in the Disputed Domain Name implies that the Complainant is manufacturing or distributing a joint or marijuana cigarette or is planning to do so in the near future. Such use of the Disputed Domain Name is likely to deceive the Complainant’s potential and actual customers into believing that they have reached the Complainant’s website.

Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Name <marlborojointettes.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 3, 2019

¹ According to the Complainant, the word “jointettes” is a combined word for “joint” and “cigarettes”.