The Complainant is Philip Morris USA Inc. Richmond, Virginia, of United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Reda, Hasan Deniz Tasdelenler Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2014. In response to an email from the Center dated April 28, 2014, further to the Registrar’s verification response, the Complainant amended the Complaint to include “Reda” as the Respondent of the disputed domain name.
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 April 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2014, 2014. No formal Response was received; however, the Respondent sent three brief emails to the Center.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 19, 2014. 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, inter alia, of the trademark MARLBORO, , U.S. registered trademark No. 68,502 first registered with the USPTO in relation to cigarettes on April 14, 1908 ; and of MARLBORO U.S. registered trademark No. 938,510 first registered July 15, 1972 with red roof design for cigarettes.
The disputed domain name was registered on January 3, 2014. 5. Parties’ Contentions A. Complainant
The Complainant has expended considerable resources on promotion and advertising of its MARLBORO trademark, and according to the Complainant numerous UDRP panels have found it to be a famous or well-known mark. The Complainant uses the trademark MARLBORO in connection with several variations of MARLBORO brand cigarettes.
The Complainant also states that it has registered the domain name , which points to its website where age-verified adult smokers can access information about its products and special offers.
The Complainant contends that its MARLBORO trademarks have become uniquely associated with the Complainant by virtue of widespread use. Its trademarks are said to be well known throughout the United States. The Complainant’s registration of the MARLBORO trademarks establishes the Complainant’s rights under paragraph 4(a)(i) of the Policy.
The Complainant contends that the disputed domain name is confusingly similar to the MARLBORO trademarks, as courts and UDRP panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. UDRP panels have consistently decided that a disputed domain name that contains a trademark in its entirety is confusingly similar to that mark. The addition of words or acronyms does not escape a finding of confusing similarity, as UDRP panels have previously held, and the addition of a generic Top Level Domain extension “.com” is irrelevant in this regard, according to the Complainant.
The Respondent is also said not to have any connection or affiliation with the Complainant, and was never known by any name or trade name that incorporates “MARLBORO”, nor did the Respondent ever obtain any trademark registrations for “Marlboro” or any variation of it. No express license, authorization or consent was ever given to the Respondent by the Complainant to use MARLBORO trademarks for incorporation in a domain name or in any other manner, neither at the time of registration or at any time since.
The Complainant contends that the Respondent’s alleged misappropriation of the MARLBORO trademark by its inclusion in the disputed domain name was for the purpose of drawing Internet users to the Respondent’s website by relying on the public recognition of the trademark. If a trader chooses a distinctive trademark in this manner it can only be for the purpose of creating an impression of association with the trademark owner. Thus illegitimate users such as the Respondent is alleged to be in this case could have no legitimate interest in the trademark. According to the Complainant, the panel in Philip Morris USA Inc. v. private,WIPO Case No. D2005-0790 commented that it was inconceivable for a respondent to have a legitimate use for a domain name incorporating the MARLBORO trademark, because of the long time use of that mark. The Complainant contends that the Respondent’s objective was in fact to divert Internet users seeking to visit the Complainant’s website to its own website, seeking to capitalize on the goodwill attached to the Complainant’s trademarks. No rights or legitimate interests result from such alleged misappropriation, according to the Complainant, which instead signifies bad faith.
According to the Complainant it is inconceivable due to the fame of its MARLBORO trademarks, that the disputed domain name was registered by the Respondent without full knowledge of the Complainant’s rights. Even a simple Internet search would have revealed the use of the Complainant’s MARLBORO trademarks as source identifiers for its tobacco products, as would simple domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online. The Complainant asserts that the Respondent is deemed to have constructive notice of the Complainant’s US trademark rights by virtue of the Complainant’s federal registrations.
In relation to use in bad faith, the Complainant contends that it is well-settled that Respondent’s use of the MARLBORO trademarks to lure Internet users to its website demonstrates bad faith use and that the Respondent seems to trade on the Complainant’s goodwill by obtaining revenue through advertisements displayed on the allegedly infringing website. According to the Complainant, previous UDRP panels have found this to be evidence of bad faith. B. Respondent
One Deniz Tasdelenler, acknowledged ownership of the disputed domain name by way of an email to the Center dated April 29, 2014. By a further email of the same date the Respondent professed not to understand what was required of him, i.e. whether he was requested to transfer the domain name or to sell it. By virtue of an email of May 2, 2014 the Center sent the Respondent the Complaint and Notification of Complaint, indicating that all relevant information needed to file a Response was contained within.
On Monday, May 12, 2014 the Center informed the parties by email that due to an unexpected email error, the Notification of Complaint and Commencement of Administrative Proceeding was being resent, and indicating that the date of commencement was May 12, 2014, and the Response due date accordingly was June 1, 2014. In an email of June 5, 2014 to the Center, Deniz Tasdelenter for the Respondent wrote in the following terms, first reiterating that he did not know what was wanted of him: “transfer of the site to you or what? I'm selling that domain, and I Spent money on it. So I won't give it to you for free. Please stop sending me notification mail all the time. Have a good day...”
In the circumstances the Panel holds that the Respondent failed to file a formal Response. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered trademark MARLBORO. However, it includes that distinctive trademark in its entirety. The inclusion with a trademark of an ordinary term of the English language, here the word “about” has consistently been held as resulting in confusingly similarity. The combination of the term “about” and the MARLBORO trademark does nothing but reinforce the false suggestion of a connection between the disputed domain name and any website that it resolves to and the Complainant, which does not in fact exist.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s MARLBORO trademark. B. Rights or Legitimate Interests
The Complainant has not licensed or authorized the Respondent to use the trade name or trademark MARLBORO in any way, and in particular has not authorized the registration of any domain name incorporating that distinctive mark. The Respondent is not known by the name “Marlboro” or “Aboutmarlboro” and there is no evidence of the registration or recording of any rights in relation to those terms by the Respondent. The Respondent has not in fact formally replied to the Complaint or put any relevant material before the Panel in relation to possible rights or legitimate interests, other than to say that the disputed domain name had been paid and the registration belonged to him. According to the Complainant’s contention’s, the disputed domain name resolved at various times either to an error page or to webpages with advertising links, suggesting that the Respondent was intent on realizing some profit from the misleading suggestion of a legitimate connection with the Complainant’s MARLBORO. Using the goodwill inherent in a third party’s trademark or brand to attract Internet users to a website, then to gain click through license fees from hyperlinks there displayed is not apt to vest rights or legitimate interests in a registrant. The Respondent has not rebutted the Complainant’s contentions.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s MARLBORO trademark is highly distinctive, has been registered and used for many years, and has very high consumer recognition in many jurisdictions. When the disputed domain name was registered it is inconceivable that the Respondent was not aware of the Complainant’s rights in the trademark MARLBORO and the considerable goodwill that vests in it. The combination with the English word “about” further suggests a knowing and deliberate registration of a domain name incorporating another party’s very distinctive and well recognized trademark. The combination of terms in the disputed domain name has a clear meaning, and it is apparent that it was deliberately sought out by the Respondent for that reason.
The knowing and deliberate use of a disputed domain name which incorporates another party’s distinct trademark with an extensive reputation, for the purpose of leading Internet users to a website where hyperlinks to other websites are to be found, amounts to use in bad faith. The Respondent can also not claim good faith on the basis of professed ignorance of the Policy and Rules applying to the registration of domain names. In any case the material communicated by the Center upon notification of a complaint explains how to address relevant matters in any Response. The Respondent did not in fact raise any relevant matters in a formal Response. The Panel notes the Complainant’s contention that at various times the disputed domain resolved to an error page, in the circumstances of this case, this does not prevent a finding of bad faith. Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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.
WiIliam A. Van Caenegem
Sole Panelist
Date: July 1, 2014
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