The Complainant is Philip Morris USA Inc., of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America (the “USA”).
The Respondent is ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2013. On July 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2013, the Registrar 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 July 29, 2013 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 July 30, 2013 substituting the original respondent, namely, Contact Privacy Inc. of Toronto, Ontario, Canada for the current Respondent
The Center verified that 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 August 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2013.
The Center appointed Simon Minahan as the sole panelist in this matter on September 9, 2013. 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 is the owner of the trademark MARLBORO, for which it has various registrations in numerous jurisdictions internationally, including registration number 68,502 on the Principal Register of the United States Patent and Trademark Office in respect of cigarettes. Additionally it is the registrant of the domain name which domain name it uses in connection with a website at “www.”.
As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide, e.g.:
Philip Morris USA Inc. v. Dinoia,WIPO Case No. D2005-0171;
Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614
Philip Morris USA Inc. v. Malton Int’l Ltd.,WIPO Case No. D2009-1263;
Philip Morris USA Inc. v. Pieropan,WIPO Case No. D2011-1735;
The disputed domain name was registered on August 14, 2012. Currently, the website at the disputed domain name has provided links to categories of various goods and services, which linked to pages with pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant contends, in short, that the disputed domain name is a blatant instance of “typosquatting” and should be transferred to it under the Policy.
More particularly it contends that:
i. The disputed domain name is confusingly similar to the MARLBORO trademarks by reason of it subsuming the whole of the word “Marlboro” with the mere addition of the letter “w”. In support of this contention it cites previous decisions holding (uncontroversially) that this is a variation of no practical distinction and further contends that the closeness of the disputed domain name to the famous MARLBORO trademark serves to increase the likelihood of confusion, including “initial interest confusion” since the public are more likely to assume that any similarly named website is associated with the complainant (citing, e.g. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) Philip Morris USA Inc. v. Pieropan, supra, Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675; PepsiCo, Inc. v. PEPSI, SRL and EMS Computer Indus.,WIPO Case No. D2003-0696).
The Complaint also refers to previous decisions which hold (again, uncontroversially,) that the gTLD signifier “.com” should be disregarded in considering the issue of confusing similarity
(citing e.g. Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA0306000165119, Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416).
ii. The Respondent has no rights or legitimate interests with respect to the disputed domain name, which contention the Complainant seeks to demonstrate initially by noting that the Respondent does not have the licence of the Complainant to make use of the MARLBORO trademark and further stating that, on the basis of inquiries it has made, it can discover no record of any registration or application for the registration of the term “Marlborow” as a trademark in the USA.
The Complainant further notes that, by virtue of the fame of the MARLBORO trademark there could not be any such registration. The Complaint then goes on to contend that the selection of a domain name which closely incorporates its famous trademark, must have been deliberately done in knowledge that it had no rights to the name and could not properly acquire them (citing, e.g., Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
iii. The disputed domain name was registered and is being used in bad faith which contention the Complainant claims is established by the inferences that flow from the Respondent’s selection of the closely similar domain name and the fame of the MARLBORO trademark. The Complainant argues that the Respondent could not have been ignorant of the MARLBORO trademark when it registered the disputed domain name and further asserts it must been assumed to have deliberately registered it to create confusion and misappropriate the goodwill associated with the MARLBORO trademark for commercial gain (citing e.g. See Philip Morris USA Inc. v. ADN HOSTING,WIPO Case No. D2007-1609 and Abbott Labs. v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088; See e.g., Popular Enters., LLC v. Am. Consumers First et al.,WIPO Case No. D2003-0742)
The Complainant also relies upon the use to which the disputed domain name has been put (a variety of uses including direction to an unrelated commercial website, re-directing to what it describes as a malignant website and redirection to a “parking” website) as establishing this bad faith use as a matter of fact and not mere inference. Finally the Complainant contends that the use of identity masking services by the Respondent in registering the disputed domain name is itself evidence of bad faith registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel relies on the foundation findings of fact set out above. It considers this case to be a flagrant instance of “typosquatting” and generally accepts the Complainant’s contentions concerning the matters under the Policy”. More particularly the Panel finds as follows: A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, incorporating the whole of the MARLBORO trademark as it does, with only the slight variation of the addition of the letter “w” to it, is confusingly similar to the Complainant’s mark. In coming to this conclusion the Panel has disregarded the effect of the gTLD signifier “.com” and otherwise respectfully agrees with and adopted the statements of principle in the cited cases referred to above. B. Rights or Legitimate Interests
The Panel accepts the evidence of the Complainant that there is no known use or registration for the term “Marlborow” by the Respondent and further, that the pre-existing rights of the Complainant in the MARLBORO trademark would preclude it. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, this being established, the onus therefore shifts to the Respondent to establish that it has some right or interest legitimates in the disputed domain name which it has failed to do. The Complainant has satisfied its burden of proof under the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the contention, and agrees with the principle enunciated UDRP in the decisions cited above, that the fame of the MARLBORO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith. It further finds the use made of the disputed domain name to direct users to commercial websites and garners advertising revenues, also establishes bad faith use under 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.
Simon Minahan
Sole Panelist
Date: September 17, 2013
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