Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Gina Zeibert of Coconut Creek, Florida, United States of America. 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 16, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2014, 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 Complainant on April 29, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 29, 2014.1
The Center verified that the Complaint, together with 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 30, 2014.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on June 11, 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
Complainant Philip Morris USA Inc. (Philip Morris) makes and sells cigarettes in the United States of America ("U.S.") under the MARLBORO trademark. MARLBORO cigarettes have been sold by Philip Morris and its predecessors in interest since 1883. According to Complainant, it has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks in the U.S. and, through such efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with Complainant.
Philip Morris owns a number of U.S. trademark registrations for the MARLBORO mark, including Registration Nos. 68,502, which was issued in 1908, and 938,510, which issued in 1972. Philip Morris also owns the domain name .
The disputed domain name resolves to a website which displays links to job postings and coupon sites, among others. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the MARLBORO trademark. Complainant emphasizes that the disputed domain name incorporates the mark in its entirety and maintains that the "mere addition of the terms 'man'' and 'ecig' to 'marlboro' does not distinguish the Infringing Domain Name from [Philip Morris'] MARLBORO Trademarks." Indeed, Complainant asserts, the use of "ecig" in connection with "Marlboro" exacerbates confusion in view of the fact that "ecig" is a well-known reference to electronic cigarettes, which are designed to provide an alternative to traditional cigarettes. "Thus, the public, seeing Respondent's domain name, may be misled into believing that [Philip Morris] is manufacturing and selling an electronic cigarette under its MARLBORO® Trademarks."
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent has no connection or affiliation with Philip Morris or any of its affiliates, has never been known by any name that incorporates the word "Marlboro," and, on information and belief, has never sought or obtained any trademark registrations for "Marlboro" or any variation thereof.
Complainant contends that Respondent's objective in registering and using the disputed domain name was to divert Internet users seeking to visit Philip Morris' legitimate website to Respondent's directory website. "Such misappropriation of the MARLBORO® Trademarks does not give rise to a right or legitimate interest…."
With respect to the issue of "bad faith" registration and use, Complainant asserts that Respondent registered the domain name with full knowledge of Complainant's MARLBORO mark. Complainant also contends that Respondent's use of the Domains by Proxy identity-shielding service is an indicator bad faith. Further, Complainant alleges, "[i]t is well-settled that Respondent's very method of infringement – using the exact MARLBORO® mark to lure Internet users to her website – demonstrates bad faith use under the Policy." Finally, Complainant asserts, on information and belief, that Respondent earns revenue each time an Internet user clicks on one of the links displayed on Respondent's directory website. "[T]his type of conduct is evidence of bad faith," Complainant declares. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the MARLBORO trademark. The disputed domain name incorporates in full the MARLBORO mark and, as contended by Complainant, the addition of the generic or descriptive terms "man" and "ecigs" is not enough to distinguish the domain name from the mark. See, e.g. Philip Morris USA Inc. v. Vyacheslav Pyatkovskiy, NAF Claim No. FA1534520 ("Respondent's addition of a color, 'red,' to Respondent's domain name [to form 'M'] does nothing to prevent confusion with Complainant's MARLBORO trademark"); Philip Morris USA Inc. v. Mamouni Abdellah, NAF Claim No. FA1516667 (finding , , and confusingly similar to the MARLBORO mark).
The Panel further finds that Complainant has rights in the MARLBORO mark, as evidenced by Complainant's U.S. trademark registrations and long use of the mark. B. Rights or Legitimate Interests
The Panel concludes that Complainant has met its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. Annex E to Complainant's amended Complaint indicates that the disputed domain name resolves to a website with sponsored listings. The site also invites offers to buy the disputed domain name.
There is no evidence that Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the disputed domain name, or that Respondent is using the disputed domain name in a fair or noncommercial manner. C. Registered and Used in Bad Faith
The Panel holds that the disputed domain name was registered and is being used in bad faith. Complainant's MARLBORO trademarks have been so extensively advertised and promoted by Complainant for so many years that it is inconceivable that Respondent was not aware of Complainant's rights in the mark at the time the disputed domain name in dispute was registered. In this regard, the Panel notes that numerous WIPO administrative panels already have determined that the MARLBORO trademarks are famous or well known. See, e.g., Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide".); Philip Morris USA Inc. v. Pieropan,WIPO Case No. D2011-1735 ("finding that the Trademark [MARLBORO®] is a well-known trademark worldwide as held by many other panels"); Philip Morris USA Inc. v. Malton Int'l Ltd.,WIPO Case No. D2009-1263 (noting the "worldwide renown" of the MARLBORO® Trademarks). Respondent's use of the mark in connection with a domain name that incorporates the abbreviation of a cigarette-related product (i.e., "ecig") provides further support to Respondent's knowledge of Complainant's MARLBORO trademark. See Philip Morris USA Inc. v. Yuki Sugata/Amc, NAF Claim No. FA1517950.
The evidence further suggests that Respondent earns income each time an Internet user clicks on one of the links found at the "" website. Given the Panel's previous finding regarding the confusing similarity between the MARLBORO trademark and the disputed domain name, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion as the source, sponsorship, affiliation or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy. See, e.g., Dr. Martens Int'l Trading GmbH v. Private Whois Service,WIPO Case No. D2011-1191 ("The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainant's [marks], adopting confusingly similar domain names and using them to host links to third-party websites offering [products for sale]"); CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201 (parked domain name used to generate click-through revenue for registrant 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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Date: June 16, 2014
1 Complainant originally named Respondent as DomainsByP. The Registrar has confirmed that the registered owner of the disputed domain name is Gina Zeibert of Coconut Creek, Florida, United States of America. Complainant amended the Complaint naming as Respondent Gina Zeibert. Accordingly, the Panel will treat Gina Zeibert as the sole Respondent.
Full & Egal Universal Law Academy