Complainant is Philip Morris USA Inc., United States of America (hereinafter “Complainant”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Irving Herrera, United States of America (hereinafter “Respondent”).
The disputed domain names <marlborohempcigarettes.com and <marlborohempprerolls.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, 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 Complainant on August 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 12, 2019 (hereinafter, the “Complaint”).
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 August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 16, 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.
Complainant is the manufacturer and marketer of cigarettes and related tobacco products and began doing business under the MARLBORO mark in 1883. Complainant is the owner of trademarks and service marks registered with the United States Patent and Trademark Office, which registrations issued at least as early as April 14, 1908. Complaint, Annex 1. Complainant advertises and promotes the MARLBORO marks extensively, and domain name panelists have repeatedly recognized the MARLBORO marks as famous.
Complainant has also registered the domain names <marlboro.com> and <marlboro.net>, the former of which resolves to Complainant’s primary location on the Internet at which it promotes its trademarked products and services. Complaint, Annexes 4 and 5.
Respondent registered the disputed domain names on July 14, 2019. Complaint, Annex 2. The disputed domain names currently resolve to inactive sites. Complaint, Annex 3.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark in that they each contain the distinctive and famous MARLBORO mark together with other common English words, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent has registered and is using the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the 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.
Each of the disputed domain names contains Complainant’s distinctive and famous MARLBORO mark. One of the disputed domain names also includes the English words “hemp” and “cigarettes,” while the second of the disputed domain names also includes the English words “hemp” and the fanciful English word “prerolls.” Domain names, which incorporate English language trademarks and/or service marks together with English words, are confusingly similar to the trademarks they incorporate. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s MARLBORO trademark and service mark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent has been using the disputed domain names to resolve to inactive web sites. The Panel can conceive of no website which could be created to legitimately use the disputed domain names. As one of the earliest domain name decisions determined in such a case, the disputed domain names can be said to have been registered and used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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 names, <marlborohempcigarettes.com> and <marlborohempprerolls.com>, be transferred to Complainant.
Date: September 16, 2019
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