WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris USA Inc. v. Gu Bei Case No. D2010-0054 1. The Parties
The Complainant is Philip Morris USA Inc. of Virginia, United States of America represented by Arnold & Porter LLP of Washington D.C, United States of America.
The Respondent is Gu Bei of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 13, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD (the “registrar”) a request for registrar verification in connection with the disputed domain name. On January 13, 2010, the registrar transmitted by email to the Center its verification response disclosing the registrant and the contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2010, 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 January 16, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 10, 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 Complainant, Philip Morris USA Inc. (hereinafter: “the Complainant”), is a widely-known company, which engages, inter alia, in the manufacture, market and sale of cigarettes in the United States of America (hereinafter: “U.S.”).
One of the Complainant's brands is the MARLBORO brand, which has been manufactured and sold by the Complainant, various predecessor companies and affiliated companies, since 1883. For many decades the Complainant has been using the MARLBORO mark and variations thereof in connection with its tobacco and smoking related products.
The Complainant provides coupons to adult smokers, twenty one years old and older, who sign up with the Complainant to receive such coupons. In addition to paper coupons, the Complainant also provides electronic coupons to adult smokers who have provided e-mail contact information.
The Complainant and its affiliated companies (hereinafter: “the Complainant”) are the owners of multiple trademark registrations for the mark MARLBORO around the world. For example: U.S. trademark registration No. 68502 – MARLBORO stylized text, with the registration date of April 14, 1908; U.S. trademark registration No. 632881 – MARLBORO logo, with the registration date of August 14, 1956; U.S trademark registration No. 826080 – MARLBORO, with the registration date of March 21, 1967; U.S. trademark registration No. 1039412 – MARLBORO LIGHTS, with the registration date of May 11, 1976; and many others.
The Complainant and its related companies expended significant resources throughout the years in promotion and advertisement throughout the U.S. As a result of extensive use and publicity, the MARLBORO trademark is solely associated with the Complainant. The MARLBORO trademark also became well-known and well-recognized by the general public, and has generated significant goodwill.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names that contain the mark MARLBORO, including and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on November 9, 2005.
The disputed domain name resolves to a pay-per-click advertising page, which offers links to different websites and search pages. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the MARLBORO trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the MARLBORO trademark and that this trademark is widely associated with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the MARLBORO mark.
The Complainant further argues that the Respondent is not making a legitimate use of the MARLBORO mark. Further, the Complainant argues that the Respondent has not demonstrated preparations to use the disputed domain name inconnection with bona fide offering of goods or services.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent promoted quasi-identical goods under the disputed domain name without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent has engaged in a pattern of registering domain names incorporating third partys' registered trademarks. The Complainant is of the opinion that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent is using the disputed domain name to attracted, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its MARLBORO mark and products at the time it registered the disputed domain name.
The Complainant further argues that the Respondent did not respond to the cease and desist letter, sent by the Complainant. The Complainant argues that this constitutes evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and to maintain an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) neither the Complainant nor its legal representatives have knowledge of the Chinese language;
(2) as the website to which the disputed domain name resolves is in the English language, the Respondent must have knowledge of English;
(3) the Respondent has demonstrated its knowledge of the English language in previous UDRP cases in which it appeared as a respondent; and
(4) requiring the Complainant to translate the Complaint into Chinese would result in significant delay and cost to the Complainant.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The MARLBORO trademark is registered in the name of the Complainant in the U.S. For example, U.S. trademark registration No. 68502 – MARLBORO stylized text, with the registration date of April 14, 1908; U.S. trademark registration No. 632881 – MARLBORO logo, with the registration date of August 14, 1956; U.S. trademark registration No. 826080 – MARLBORO, with the registration date of March 21, 1967; U.S. trademark registration No. 1039412 – MARLBORO LIGHTS, with the registration date of May 11, 1976; and many others.
The disputed domain name differs from the registered MARLBORO trademark only by the additional word – “coupons”.
The disputed domain name integrates the Complainant's trademark MARLBORO in its entirety, as a dominant element. The word “coupons” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's MARLBORO trademark, especially as it represents goods which are regularly offered under the MARLBORO trademark by the Complainant.
Previous WIPO panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “[T]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909). “The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests with respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MARLBORO trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant had registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for its MARLBORO trademark at least since the year 1908. It is suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved.
The disputed domain name resolves to a pay-per-click advertising page, which offers links to websites and search pages.
From the evidence submitted by the Complainant, the Panel finds that until recently, the pay-per-click advertising page operating under the disputed domain name offered links to websites that promoted the sale of cigarettes, some of which carried the MARLBORO mark. The Panel finds that the Respondent's use of the name “marlboro” to promote similar or identical goods to the good being sold by the Complainant is clear evidence of the Respondent's knowledge of the Complainant and of the Complainant's use of the MARLBORO mark, upon registering the disputed domain name. The Respondent's actions constitute, therefore, bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name for quasi-identical goods to the ones the Complainant manufactures and produces constitutes bad faith on behalf of the Respondent (see, Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Further, the fact that the disputed domain name, which is identical or confusingly similar to the MARLBORO mark, resolves to a pay-per-click website evidences the Respondent's attempt to produce profit by taking advantage of the Complainant's famous MARLBORO mark. Previous WIPO panels have asserted the following: “It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of ‘domain name parking' or ‘pay per click' services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of ‘domain name parking' or ‘pay per click' service pages operate. A domain name owner ‘parks' the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This ‘click-through revenue' is then ordinarily split between the domain name parking service provider and the owner of the domain name […] The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page” (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
In addition the Respondent failed to respond to the cease and desist letter, which was sent by the Complainant.
The Panel cites the following similar case in approval:
“There is also considerable force in the submission raised by the Complainant that the fact that the Respondent failed to respond to the cease and desist letter is recognition of both a bad faith registration and use. There is significant authority from earlier UDRP decisions, which are cited by the Complainant at Annexes 25 to 28 of the Complaint, that a failure on the part of the Respondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use” (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
The Panel also notes the pattern of the Respondent's behavior, on which the Complainant has commented. The Panel finds that the fact that the Respondent registered multiple domain name that incorporate third partys' famous registered trademarks further evidences the Respondent's bad faith.
Based on the evidence presented on the use of the MARLBORO trademark, the evidence submitted as to the use made by the Respondent of the disputed domain name and the Respondent's failure to reply to the cease and desist letters sent by the Complainant, the Panel can draw the inference that the disputed domain name was registered and used in bad faith.
Further, the disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous WIPO panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant's distinctive registered trademark and the Respondent's use of the disputed domain name, the Panel finds that the registration of the disputed domain name which is a confusingly similar to the Complainant's mark shows the Respondent's intent to operate a pay-per-click website that offers links to websites which offer similar services and by doing so, creating a likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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 the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 24, 2010
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