WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris USA Inc. v. Conera Case No. D2010-0075 1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States of America.
The Respondent is Conera of Tveri, Russian Federation. 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 15, 2010. On January 18, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, 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 the Respondent of the Complaint, and the proceedings commenced on January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2010.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on February 18, 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 (and various predecessors' entities) has been using the MARLBORO trademark in the international market for more than 100 years – at least since 1883 – and owns several registrations for this mark throughout the world – the oldest U.S. registration dates back to 1908. The modern history of the trademark MARLBORO starts in 1955 and continues in the present.
The Complainant has been using the mark MARLBORO to identify tobacco and smoking related products for decades and is surely associated to the MARLBORO mark and products, due to the Complainant's widespread and extensive efforts.
Confirming the extent of the mark's renown are several previous WIPO Administrative panel decisions concerning domain names that contained this mark, such as Philip Morris USA Inc. v. Malton International Ltd..WIPO Case No. D2009-1263 (November 9, 2009); Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (February 8, 2008), among several others.
The Complainant has also registered the domain name . This domain name points to the Complainant's site, which enables Internet users to access information regarding the original MARLBORO products. 5. Parties' Contentions A. Complainant
The domain name in question, , leads to an online cigarette retailer website that purports to sell MARLBORO cigarettes, as well as competitors' brands, such as WINSTON, CAMEL, KENT, and LUCKY STRIKE, among others.
The Respondent's website includes a MARLBORO ‘page' which purportedly sells five varieties of MARLBORO cigarettes, the images of which are accompanied by a description of the product. The Respondent's sales of these cigarettes, however, are not authorized by the Complainant.
The Respondent may lead the consumers into error, as the website provides a MARLBORO page, with a descriptive summary of the history of the MARLBORO brand. The summary recounts past marketing of the “amazing Marlboro brand” since “England 1847” and concludes: “Around 1972, Marlboro cigarettes became the most popular brand and have remained so, for the most part since then.'
The Respondent is incorporating the MARLBORO trademarks into the Domain Name and on the website, on which competing products are advertised and sold. The Respondent explicitly states that it ships MARLBORO cigarettes manufactured for sale abroad into the United States, which is unlawful and violates both U.S. law and a General Exclusion Order (“Order”) issued by the U.S. International Trade Commission.
As it was asserted by the Complainant, trademark MARLBORO has been used in the market for more than a century and has been registered in the U.S. since 1908. Proof of these allegations was duly presented by the Complainant.
According to the Complainant, the Respondent has also provided false contact information in the WhoIs records. The “Str Fronto, Tveri 54546. Russian Federation 6546353” address provided by the Respondent does not resolve to any existing address in Google Maps.
The Complainant accordingly submits that the disputed domain name is confusingly similar to the Complainant's MARLBORO trademarks, that the Respondent does not have any right or legitimate interests in the disputed domain name and further that the Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The domain name is confusingly similar to the MARLBORO trademark, as this trademark is incorporated within the disputed domain name. Besides, the disputed domain name consists of a phrase that advertises the sale of cigarettes, which are the main goods sold by the Complainant under such mark.
Complainant, on its turn, has presented consistent evidence of ownership of the mark MARLBORO, as well as of its important use all over the world for decades.
Hence, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of the Complainant. B. Rights or Legitimate Interests
Given the clear evidence that the MARLBORO trademark is widely known, the fact that the products under this mark have been in the international market for more than a century, as well as the undeniable link between that mark and the Complainant, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The fact that the Respondent itself sells MARLBORO cigarettes together with competing products to the Complainant's products through the website to which the disputed domain name resolves and that the Respondent uses without authorization the Complainant's advertising material for the MARLBORO products only enhances the Panel's finding that the Respondent has no rights or legitimate interests to the disputed domain name.
The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The facts outlined in item B above can also be used to evidence the Respondent's bad faith in obtaining the disputed domain name.
As mentioned, the Panel finds the renown of the MARLBORO trademark is undeniable; it cannot be conceived that someone that does business selling cigarettes does not know of its existence. In fact, the Respondent displays on the website excerpts of the history of the MARLBORO trademark referring to it as “amazing”,
“well[-]known” and the “most popular” brand.
In addition, the address supplied by Respondent is a false address. The Respondent's provision of false contact information further supports a finding that the disputed domain name was registered in bad faith.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the domain name in bad faith. The Panel finds that the Complainant has also proved the third element of the Policy. 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 domain name be transferred to the Complainant.
Alvaro Loureiro Oliveira
Sole Panelist
Dated: March 9, 2010
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