WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris USA Inc. v. yfmg Case No. D2010-0058 1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States.
The Respondent is yfmg of Riga, Latvia. 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 January 13, 2010. On January 13, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 15, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and 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 20, 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 amendment to the Complaint on January 22, 2010. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 15, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 17, 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-know company, which engages, inter alia, in the manufacture, market and sale of cigarettes in the United States of America (hereinafter “US”).
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 and its affiliated companies (hereinafter the “Complainant”) are the owners of multiple trademark registrations for the mark MARLBORO around the world. For example: US trademark registration no. 68502 – MARLBORO logo, with the registration date of April 14, 1908; US trademark registration no. 632881 – MARLBORO logo, with the registration date of August 14, 1956; US trademark registration no. 826080 – MARLBORO, with the registration date of March 21, 1967; US trademark registration No. 1039412 – MARLBORO LIGHTS, with the registration date of May 11, 1976; and many others.
The Complainant expended significant resources throughout the years in promotion and advertisement throughout the US. As a result of extensive use and publicity, the MARLBORO trademark become widely-know and 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 name MARLBORO. For example: and and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on October 9, 2007.
The disputed domain name does not currently resolve to an active webpage. 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 recognized 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.
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 Responded 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 is using the disputed domain name to attract, 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.
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 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 US. For example, US trademark registration No. 68502 – MARLBORO logo, with the registration date of April 14, 1908; US trademark registration No. 632881 – MARLBORO logo, with the registration date of August 14, 1956; US trademark registration No. 826080 – MARLBORO, with the registration date of March 21, 1967; US trademark registration No. 1039412 – MARLBORO LIGHTS, with the registration date of May 11, 1976; and many others.
The disputed domain name consists of a repetition of the registered MARLBORO trademark and the generic top-level domain (gTLD) “.com”.
The dominant element in the disputed domain name is the Complainant's MARLBORO trademark, which is incorporated in its entirety. The fact that the MARLORO mark appears twice in the domain name does not serve to distinguish or differentiate the disputed domain name from the Complainant's MARLBORO trademark. On the contrary, repetition of the Complainant's MARLBORO trademark serves to emphasis Complainant's mark. One panel previously provided that “[r]espondent's domain name wholly incorporates [c]omplainant's mark twice. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The addition of the 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 the 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 had 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 in 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 domain name and the Respondent has 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 registered its MARLBORO trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant has owned registrations for its MARLBORO trademark at least since the year 1908. It is strongly 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, 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.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name lead Internet users to a website, which provided information and links to numerous on-line cigarette retailer websites and promoted the sale of cigarettes, some of which carried the MARLBORO mark. The Respondent's use of the name “marlboro” to promote similar or identical goods to the good being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark MARLBORO. The Respondent's previous actions therefore constitute 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 (as well as counterfeit versions of the Complainant's goods) constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
In light of the Complainant's distinctive registered trademark and the Respondent's use of the domain name, the Panel finds that the registration of the disputed domain name containing shows the Respondent's intent to operate a 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.
The disputed domain name currently resolves to an error page. However, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Based on the evidence presented to the Panel, including on the use of the MARLBORO trademark, the previous use made by the Respondent of the domain name and the Respondent's current failure to use the disputed domain name in any meaningful way, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
The Panel cites the following similar case with approval: “The concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept” (Telstra Corporation Limited, supra). And also, “when a domain name is so obviously connected with a complainant, it's very use by a registrant with no connection to the complainant suggests ‘opportunistic bad faith'” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
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 for commercial gain 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.
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: March 2, 2010
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