WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Peter Malandrinos

Case No. D2020-2760

1. The Parties

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

The Respondent is Peter Malandrinos, United States.

2. The Domain Names and Registrar

The disputed domain names <marlboros.info> and <marlboros.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 21, 2020, 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 the Complainant on October 22, 2020 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 October 26, 2020.

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 November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2020.

The Center appointed Nels T. Lippert as the sole panelist in this matter on November 30, 2020. 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 specialized in manufacturing and selling cigarettes. The Complainant uses the MARLBORO trademark in connection with several variations of MARLBORO brand cigarettes.

The Complainant owns numerous trademark registration in the United States including specifically the following registrations for the MARLBORO Mark:

- United States Registration No. 68502, issued April 14, 1908 for “cigarettes”;
- United States Registration No. 4171817, issued July 10, 2012 for “tobacco products, namely, cigarettes”; and
- United States Registration No. 5379044, issued January 16, 2018 for “tobacco products, namely, cigarettes”.

Numerous WIPO UDRP panels have previously determined that the MARLBORO trademarks are famous. See, e.g. Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735; and Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

The Complainant has registered the domain names <marlboro.com> and <marlboro.net>. The <marlboro.com> domain name resolves to the Complainant’s MARLBORO website which provides information regarding the Complainant’s MARLBORO brand products. The <marlboro.com> domain name was registered on March 6, 2000.

The disputed domain names were registered on August 14, 2020 and, as of the filing of the Complaint and Amended Complaint, resolved to blank pages.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark because they vary from the Complainant’s trademark by only one letter, the letter “s” which has been added at the end of MARLBORO. The Complainant also notes that the addition of a Top-Level Domain (“TLD”) in the disputed domain names should be disregarded under the confusingly similarity test.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent is not sponsored by or affiliated with the Complainant and has not been given permission to use the Complainant’s trademarks in any manner. The Complainant alleges that the Respondent is not commonly known by the disputed domain names and has failed to make use of the disputed domain names as they resolve to blank pages with no content. Furthermore, the Complainant contends that the fact that the Respondent registered the disputed domain names many years after the Complainant registered its trademark as well as its <marlboro.com> domain name, evidences a lack of rights or legitimate interests in the disputed domain names.

The Complainant further contends that the disputed domain names were registered and are being used in bad faith because, at the time of registration, the Respondent knew or should have known of the existence and fame of the Complainant’s trademarks. Furthermore, typosquatting, as is evident here, is evidence of bad faith registration. Although the disputed domain names do not resolve to active websites, the Complainant contends they are being used in bad faith due to passive holding which is indicative of an intention to hold the disputed domain names for future use in a way detrimental to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[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”.

A. Identical or Confusingly Similar

In this case the disputed domain names incorporate the Complainant’s MARLBORO trademark in its entirety with the addition of the letter “s” at the end. This is a classic example of typosquatting. As noted in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant trademark. See, Philip MorrisUSA Inc. v. Baolu Wan and Wan Bao Lu, WIPO Case No. D2015-2255. Furthermore, the addition of the applicable TLD is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.

The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the disputed domain names. The Complainant contends that none of the circumstances under paragraph 4(c) of the Policy would apply in this case. The Respondent has not advanced rights or legitimate interests to rebut the Complainant’s prima facie case, and none are evident from the record or the use of the disputed domain names.

The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In this case, the Complainant has submitted compelling evidence that the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered by the Respondent many years after the Complainant’s MARLBORO trademark was registered in the United States and many years after the Complainant’s <marlboro.com> domain name was registered and used. As noted in WIPO Overview 3.0, section 1.9, panels will normally find that employing typosquatting as found here, signals an intention on the part of the Respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the Complainant. Although, in this case the disputed domain names do not resolve to active websites it is clear to the Panel that the Respondent intends to use the disputed domain names to the detriment of the Complainant. Panels have consistently found that the mere registration of a domain name comprising typos to a widely known or famous trademark can itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

The Panel concludes that the Respondent registered and uses the disputed domain names in bad faith and, therefore, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names <marlboros.info> and <marlboros.org> be transferred to the Complainant.

Nels T. Lippert
Sole Panelist
Date: December 8, 2020