WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris USA Inc. v. Mariana Gemenitzi Case No. D2009-1715 1. The Parties
Complainant is Philip Morris USA Inc., United States of America (“United States”), represented by Arnold & Porter, United States.
Respondent is Mariana Gemenitzi, Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2009. On December 15, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 17, 2009, GoD, Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 8, 2010.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 15, 2010. 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 following uncontested facts are taken from the Complaint. Complainant
Complainant is one of the world's best known manufacturers of cigarettes. It is an American corporation, with its headquarters in Richmond, Virginia, and it is part of the Altria group of companies.
Complainant is the registered proprietor of the word mark MARLBORO in the United States and elsewhere. Complainant's mark has been registered (in international class 34 in respect of cigarettes, since 1908.
Complainant owns the domain name where it operates a website (“Complainant's website”). 5. Parties' Contentions A. Complainant
Complainant contends:
1. The domain name is confusingly similar to Complainant's mark. Numerous panels have held that a domain name is confusingly similar to a trademark where the domain name incorporates the complainant's mark in its entirety. In this case, Respondent has incorporated Complainant's mark in full in the domain name, with the mere addition of the term “4sale”. Consumers expect to find a trademark owner on the Internet at a domain name composed of the trademark owner's name or mark, and the addition of the said term does not dispel the confusing similarity.
The domain name creates initial interest confusion, causing the diversion of Internet traffic looking for Complainant's website to Respondent's website. The generic “.net” is irrelevant to the issue of confusing similarity.
2. Respondent has no rights or legitimate interests in the domain name, for the following reasons:
(i) Respondent has never sought or obtained any MARLBORO trademark.
(ii) Respondent is not a licensee of Complainant, and has not obtained the Complainant's permission to use Complainant's mark, or any domain name incorporating Complainant's mark.
(iii) Complainant's mark is distinctive, and the only reason Respondent chose the domain name was because it was seeking to create an impression of an association with the Complainant. Respondent was clearly aware of Complainant and its famous MARLBORO brand prior to registering the domain name and establishing Respondent's website. That is established by Respondent's immediate and unauthorized sale of MARLBORO cigarettes on the website.
3. The domain name has been registered and is being used in bad faith, having regard to the following:
(i) Respondent was aware of Complainant's rights in Complainant's mark, which has achieved international fame.
(ii) Respondent is using Respondent's website to misdirect Internet users and confuse them regarding the official source of MARLBORO products. To offer Complainant's goods for sale in connection with the disputed domain name falsely suggests an affiliation with, endorsement by, or permission from, Complainant.
(iii) Respondent's use of the disputed domain name in association with a website that facilitates illegal importation of tobacco products into the Unites States further underscores the bad faith use.
(iv) Respondent's very method of infringement – the exact use of the Complainant's mark to lure consumers to the Respondent's website – demonstrates bad faith use under the Policy.
(v) Respondent's registration and use of the domain name creates initial interest confusion, which occurs when Internet users are attracted to the Respondent's website because of Respondent's use of Complainant's mark in the domain name.
(vi) The domain name is so obviously indicative of Complainant's products that its use of the domain name would inevitably lead to confusion of some sort. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from Respondent's default. A. Identical or Confusingly Similar
Respondent's domain name consists of “marlboro” with the addition of the term “4sale” which is descriptive of the services offered by Respondent on the corresponding website, namely online sale of cigarettes. The element “marlboro” is identical to Complainant's mark. In the Panel's view, the addition of a descriptive term is not enough to avoid the likelihood of confusion arising from the use of the trademark MARLBORO. It is a well-established principle that non-distinctive additions to a trademark as well as the inclusion of the gTLD denomination “.net” do not avoid confusing similarity of domain names and trademarks.
The Panel finds that the disputed domain name is confusingly similar to Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
Given the fame of Complainant's MARLBORO mark, its inherent distinctiveness, the Panel considers it extremely unlikely that Respondent has registered the disputed domain name without knowledge of Complainant's business under the MARLBORO brand. The fact that Respondent uses a depiction of a product bearing the MARLBORO logo on its web site as well as a reproduction of a picture from the Complainants marketing material supports the view that Respondent was well aware of Complainant's rights.
In the Panel's view, use that is not bona fide cannot give rise to a legitimate interest in a domain name under the Policy. Respondent's conduct in knowingly adopting a domain name confusingly similar to the MARLBORO trademark was calculated to trade on and benefit from the fame of Complainant's mark and could not, in the Panel's view, give rise to bona fide use capable of conferring a right or legitimate interest in the domain name. Reference is inter alia made to Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; and Advance Magazine Publishers Inc. v. Lisa Whaley,WIPO Case No. D2001-0248.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraphs 4(b)(ii), (iii) and (iv):
(ii) the respondent 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 it has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that website.
Complainant has submitted evidence, unchallenged by Respondent, that its MARLBORO trademark is internationally famous. At least one other panel has found that the MARLBORO mark is internationally famous. See Philip Morris USA Inc. v. n/a,WIPO Case No. D2004-0462.
Given the distinctive nature of the term “Marlboro” and the extensive promotion of the trademark, it is inconceivable to the Panel that Respondent registered the disputed domain name without prior knowledge of Complainant and Complainant's mark.
This is underlined by the way Respondent actually uses the disputed domain name. Complainant has thus shown in evidence that Respondent uses the disputed domain name to offer and advertise goods originating from the Complainant as well as goods from competing brands. (See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
The Panel further finds that by using Complainant's trademark to draw Internet users to a site offering not only Marlboro cigarettes but also cigarettes of competing brands the Respondent is attempting to divert customers from Complainant and thus to disrupt Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658. The Respondent has offered no satisfactory alternative explanation for its conduct and the Panel finds that such disruption was and still is the primary purpose behind the Respondent's registration of the disputed domain name.
Respondent's use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant's MARLBORO mark as to source, sponsorship, affiliation, or endorsement. Taking into account the fame of Complainant's mark and its widespread use, Internet users encountering the disputed domain name are likely to be misled into believing that they have found a website legitimately connected to Complainant. Respondent's use of the MARLBORO logo as well as of the reproduction of a picture from the Complainant's marketing on the website serves only to confirm that misperception on the part of visitors to the site, who are already familiar with Complainant's famous MARLBORO brand.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
Complainant has requested that the disputed domain name be transferred to it. 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 disputed domain name be transferred to Complainant.
Knud Wallberg
Sole Panelist
Dated: January 28, 2010
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