The Complainant is Philip Morris Brands Sarl of Neuchatel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Thans Schmid of Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2012. On September 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Respondent did not file a formal Response with the Center; however, it sent three informal email communications to the Center on September 7, 2012. On September 28, 2012, the Center informed the Parties that the Panel Appointment process was commencing.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 3, 2012. 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.
The language supported by the Registrar is English. The Complainant submitted the Complaint in English and requested English to be the language of the proceeding.
Therefore, the language of the proceeding is English, pursuant to the Rules, paragraph 11. 4. Factual Background
The Complainant is a company which is part of the worldwide known group of companies affiliated with Philip Morris International Inc. (jointly referred to as “PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries. PMI has manufactured, marketed, and sold cigarettes for a number of years. In 2011, PMI held an estimated 28.1 percent of the total international cigarette market, excluding China and the United States.
The Complainant owns a large portfolio of well-known trademarks for its tobacco products. Among them, but by no means limited to, are the following trademark registrations: the European Community trademark MARLBORO (word) No. 75606, the German trademark MARLBORO (word) No. 639585 and an International trademark MARLBORO (design) No. 1023145.
Moreover, PMI owns a comprehensive portfolio of domain names consisting of the term MARLBORO, including, but not limited to , , , , , , , , , and .
The Respondent Thans Schmid is situated in Hong Kong, SAR of China. The disputed domain name was registered on April 8, 2010.
The disputed domain name (English translation: M) displays a website offering the purchase of driver’s licenses.
On the homepage it is said: “And whilst generally speaking Cigarettes, even cheap cigarettes are bad for your health people need driver’s licenses” and “[f]or whatever reason you don’t have a driver’s license. Ok we can help. 100% legitimate real licenses, no questions, no hassle, no fuss, and better for you than cheap cigarettes.” 5. Parties’ Contentions A. Complainant A.1. The disputed domain name is confusingly similar to several trademarks in which the Complainant has rights.
Complainant is the registered owner of MARLBORO trademarks in numerous jurisdictions, including, but not limited to, Japan, Australia, Georgia and the entire European Union.
The disputed domain name is identical to the trademark registrations of the Complainant.
Given the worldwide reputation and renown of the Complainant’s trademark, it is most likely that the majority of Internet users who see the disputed domain name will immediately recognize the MARLBORO trademark, and assume that the disputed domain name is owned, endorsed or controlled by the Complainant or is affiliated with the famous trademarks. This recognition is further endorsed by the use of the term “zigaretten” in the disputed domain name. A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent registered the disputed domain name on April 8, 2010, long after the Complainant’s trademarks were registered.
There is no relationship between the Complainant and the Respondent, allowing the Respondent to use the disputed domain name .
The disputed domain name is used to offer the purchase of driver’s licenses. There is no relation between the disputed domain name which refers to cigarettes and the actual content of the website.
The Complainant finds support in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, confirming that in cases where the trademark is well-known and recognized, no bona fide or legitimate use could be claimed by the Respondent. A.3. The disputed domain name was both registered and used in bad faith.
The Complainant refers to Policy, paragraph 4(b)(iv) to assert that the disputed domain name has been registered in bad faith.
The Complainant argues that its MARLBORO trademarks have been registered for decades and are well-known all over the world, and that it is unimaginable that the Respondent was not aware of their existence when registering the disputed domain name.
The Complainant also contends that the circumstances clearly indicate that Respondent has registered the disputed domain name primarily for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. While the website exclusively offers the purchase of driver’s licenses, the disputed domain name clearly refers to the Complainant’s trademark.
Thus, the Complainant says that it is not plausible that the Respondent pursues any legitimate objective with the disputed domain name, because any possible use would infringe the Complainant’s trademarks and reputation.
The Complainant contends that the Respondent’s purpose is to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks.
Based on aforesaid, the Complainant considers that the Respondent registered and uses the disputed domain name in bad faith according to Policy, paragraph 4(b)(iv). B. Respondent
The Respondent sent three communications on September 7, 2012 that did not address the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the distinctive trademark MARLBORO and merely adds the descriptive terms “zigaretten” and “billig”, which respectively mean in English “cigarettes” and “cheap”. Since the Complainant has rights on the trademarks MARLBORO, Panel finds that the disputed domain name is confusingly similar to the trademark MARLBORO.
The Panel finds that the condition of the paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent does not make a bona fide offering of goods and services under the disputed domain name and the Respondent has not been commonly known under the disputed domain name.
The Respondent has no connection of affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, and also taking into account the Panel’s findings below, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on your website or location.
The MARLBORO trademarks enjoy worldwide reputation for cigarettes.
In view of the reputation of the trademark MARLBORO, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name is likely to be confused with the protected trademarks MARLBORO of the Complainant.
By improper use of the Complainant’s trademark for the disputed domain name and by using a picture of a MARLBORO pack of cigarettes on the homepage of its website, the Panel finds that the Respondent deliberately wants to create a likelihood of confusion.
Moreover, including the term “billig/cheap” in the disputed domain name can be considered as a way to divert the Internet users who will access the website into thinking that they will be able to purchase cigarettes at a good price.
Thus, the Panel finds that the disputed domain name was registered intentionally primarily for the purpose of attracting Internet users by creating a confusion with the Complainant’s trademarks for the purpose of increasing the traffic on the Respondent’s website.
This constitutes bad faith registration of the disputed domain name in application of paragraph 4(b)(i) and (ii) of the Policy.
The Respondent appears to use the disputed domain name to intentionally attempt to divert Internet traffic to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith registration and use of the disputed domain name in application of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that Complainant has established that the Respondent registered and used the disputed domain name in bad faith within the meaning 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 name be transferred to the Complainant.
Marie-Emmanuelle Haas
Sole Panelist
Dated: October 17, 2012
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