WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Irving Herrera

Case No. D2019-1747

1. The Parties

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

Respondent is Registration Private, Domains By Proxy, LLC / Irving Herrera, United States of America.

2. The Domain Name and Registrar

The disputed domain name<marlboroprerolls.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 July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 24, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 30, 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on August 28, 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

Complainant is a manufacturer of cigarettes, and has sold its products under the registered trademark MARLBORO for more than a century. The MARLBORO mark is one of the most famous trademarks in the world. Complainant has long held numerous registrations of the MARLBORO mark, including registration 68,502 with the United States Patent and Trademark Office registered on April 14, 1908. Complainant’s main website is located at “www.marlboro.com”.

The Domain Name was registered on June 27, 2019. The Domain Name resolves to an essentially blank website with the phrase “website coming soon”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent has not replied to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark MARLBORO, through longstanding registration and widespread use. The Panel further concludes that the Domain Name is confusingly similar to the MARLBORO mark, because the Domain Name incorporates that mark in its entirety and adds the word “prerolls”. In the smoking world, and especially in the marijuana world, a “pre-roll” is a cigarette already rolled and ready to light. The addition of the word “prerolls” does little or nothing to reduce the confusing similarity between the mark and the Domain Name, the Panel notes that Complainant’s MARLBORO cigarettes are typically if not always pre-rolled and sold in packs.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain why he registered the Domain Name and why he had a legitimate reason for doing so. Given the fame of the MARLBORO mark and the fact that Respondent was very likely aware of that mark (see below), it suffices here to observe that Complainant affirms that it has never authorized Respondent to use the MARLBORO mark in a domain name or otherwise.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and has used the Domain Name in bad faith within the meaning of the Policy. Respondent does not – and credibly cannot – deny knowledge of the famous MARLBORO trademark at the time he registered the Domain Name. The presence in the Domain Name of the word “prerolls”, which is a smoking-related term and hence falls well within the economic field in which Complainant famously operates, makes it rather obvious that Respondent has targeted Complainant’s mark for some purpose.

The Panel finds that Respondent is in bad faith for his “passive holding” of a Domain Name confusingly similar to a famous trademark, under the principle first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that seminal case, the panel held that bad faith under the Policy may occur, in appropriate circumstances, where a respondent passively holds a domain name confusingly similar to a famous trademark. The two main factual considerations driving the Telstra decision, which are also present here, are that the trademark in question is well-known and that the respondent offered no evidence of any legitimate purpose for registering the domain name. The Telstra panel concluded that, in those circumstances (plus some other considerations not present here but not as important), “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.

The Panel concludes that the same result is warranted under the record here.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <marlboroprerolls.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: August 29, 2019