Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States of America.
Respondent is Alan Dowdee of Charlotte, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2014. At that time, the WhoIs database reflected that Registrant's identity was private and being shielded by Domains by Proxy, LLC of Scottsdale, Arizona, United States of America. See Complaint, Annex A (WhoIs record). Accordingly, Complainant listed Domains by Proxy, LLC as the Respondent.
On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2014, the Registrar transmitted by email to the Center its verification response and confirmed that Respondent was the actual Registrant of the disputed domain name.
On July 4, 2014, the Center provided Complainant with Respondent's name and contact information and invited Complainant to amend its Complaint. Complainant accepted the invitation and on July 7, 2014, filed an amended Complaint (the "Complaint") which named Alan Dowdee as 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2014. Pursuant to the Rules, paragraph 5(a), the due date for the Response was July 28, 2014. Respondent did not submit any response. Accordingly, the Center issued a "Notification of Respondent Default" on July 29, 2014.
The Center appointed Steven L. Snyder as the sole panelist in this matter on August 12, 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
1883 was a busy year: Richard Wagner died of a heart attack in Italy, the Brooklyn Bridge was finally opened, the Krakatoa volcano erupted, and the MARLBORO trademark was first used in commerce in association with cigarettes. See United States of America Trademark Reg. No. 68,502 (Complaint, Annex C). More than 130 years have passed and the MARLBORO mark is still being used to sell cigarettes.
Over the years, the associated trade dress has greatly changed. In the first half of the 20th century, Complainant marketed the MARLBORO-brand cigarettes to women and proclaimed that they were "Mild as May." In the 1950s, cigarette companies tried to further ease consumers' worries about the health effects of smoking by adding filters to their products. Complainant took this step with its MARLBORO-brand cigarettes in December 1955. See Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379, 381 (S.D.N.Y. 1995) (Complaint, Annex D). At the same time, Complainant decided to market this brand towards men and adopted a western theme for its advertising. Instead of being mild, the MARLBORO-brand cigarettes were macho and were smoked by virile cowboys who rode horses and liked to camp in the open spaces of "Marlboro Country." See id.
Complainant's new marketing strategy was tremendously successful. In 1974, MARLBORO-brand cigarettes became the best-selling brand in both the United States and the world. Id. This success was not cheap: Complainant spent billions of dollars on advertising. Id. It also incurred substantial legal fees warding off competitors who tried to associate their cigarettes with cowboys. Id.; see also Philip Morris USA Inc. v. Cowboy Cigarette Inc., 2003 WL 22852243 (S.D.N.Y. 2003) (Complaint, Annex D).
The dual task of promoting and protecting the MARLBORO brand continues today.
Among its many promotional activities, Complainant has established a website linked to the domain name. Complaint, Annex E (screen shots from "www."). On that website, Complainant markets its cigarettes and touts the "Marlboro Ranch." Id., Annex F (webpages that promote the ranch).
In 2000, Complainant purchased the Deadrock Guest Ranch which covers about 18,000 acres of Montana. The ranch is now referred to in Complainant's advertising as the "Crazy Mountain Ranch" or the "Marlboro Ranch." See Complaint 18. Each year, Complainant offers luxurious, free vacations at the ranch to loyal customers and to the lucky winners of contests, sweepstakes and other promotions. Id. Guests at the Marlboro Ranch reportedly enjoy free gourmet meals, an open bar, live music and a plethora of fun activities, including skeet shooting, river rafting, riding horses, and travelling on zip lines.
The Marlboro Ranch is an important part of Complainant's relationship marketing campaign and has attracted the attention of the media. See, e.g., Inside the Super Secret Marlboro Ranch, The Montana Pioneer (February 2014); Sarah Yager, Welcome to Marlboro Country: Philip Morris Stakes a Last Claim in the West, The Atlantic (March 15, 2013). The Marlboro Ranch has also spawned a loyal following among its visitors, with numerous Facebook pages devoted to the facility. See Facebook pages "Marlboro Ranch – Montana," "Marlboro Ranch summer 2014," "Marlboro Ranch Summer 2011," "Marlboro Ranch / Crazy Mountain Ranch in Montana."
Complainant continues to fight against competitors whom it believes are infringing its famous MARLBORO mark. In addition to filing trademark infringement lawsuits, Complaint, Annex D, the company has initiated numerous UDRP proceedings.
The genesis of this proceeding was Respondent's registration of the disputed domain name on February 2, 2014. Respondent sought to shield his identity by utilizing the services of Domains by Proxy, LLC. That shield fell less than six months later when Complainant filed this proceeding and the Registrar divulged Respondent's name and address. 5. Parties' Contentions A. Complainant
Complainant argues that it has exclusive rights in the MARLBORO mark and that the disputed domain name, , is confusingly similar to that mark. The addition of the word "ranch" to Complainant's famous MARLBORO mark does not lessen any confusion, Complainant contends, particularly given its well-publicized dude ranch in Montana.
Respondent does not have any rights or legitimate interests in the disputed domain name, Complainant argues. It has never given Respondent permission to use the MARLBORO mark, Respondent has never been known by any name that incorporates the MARLBORO mark, and there is no affiliation or connection between Respondent and Complainant In Complainant's view, Respondent has deliberately misappropriated its famous trademark and is trying to divert Internet users to his website.
Complainant maintains that the registration of the disputed domain name was in bad faith: Respondent clearly knew of the MARLBORO mark when he registered . The fact that Respondent used an identity-shielding service further indicates his guilty conscience. Complainant also argues that Respondent's use of the disputed domain name was in bad faith: Consumers are misled by the confusingly similar disputed domain name and visit Respondent's website. Once there, they are presented with a wide variety of links to commercial websites. Clicking on those links wrongfully puts money into Respondent's pockets.
Based on this evidence and the UDRP, Complainant argues that it is entitled to an order transferring the disputed domain name to its ownership. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As with any adjudication of rights, the Panel must determine the facts and then apply the controlling principles.
The parties to the proceeding are the primary source of the facts. The complainant must address the UDRP's well-known elements and "prove that each of these three elements are present." Policy, paragraph 4(a); accordRules, paragraph 3(b)(ix). Thereafter, the respondent "shall submit a response." Rules, paragraph 5(a). If the respondent fails to respond, the panel is free to draw such factual inferences "as it considers appropriate." Rules, paragraph 14(b).
A panel may also conduct limited factual research in order to better understand the averments of a party or to fill in small gaps. For example, a panel may visit the website linked to the disputed domain name, review a trademark registration and consult a dictionary to ascertain a word's common meaning. Such research may be particularly helpful when a respondent defaults on its obligation. See Société des Produits Nestlé SA v. Telmex Management Servs.,WIPO Case No. D2002-0070 ("Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional light in a default proceeding ….").
The principles which control the outcome of a UDRP dispute are drawn, first and foremost, from the Policy and its implementing Rules. See Rules, paragraph 15(a). In addition, the Panel may consider "and any rules and principles of law that it deems applicable." Id.; see also Howard Jarvis Taxpayers Ass'n v. Paul McCauley,WIPO Case No. D2004-0014 ("Because the parties did not brief in their submissions the central legal issue raised by this case … the Panel … undertook significant independent research.").
This adjudicative framework means that a complainant does not necessarily prevail whenever the respondent chooses not to respond: "Respondent's default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter. To be more precise, Respondent's default does not mean that the Panel must accept as true factual allegations in the Complaint that are unsupported by evidence." Brooke Bollea a.k.a. Brooke Hogan v. Robert McGowen,WIPO Case No. D2004-0383 (denying transfer of domain name to daughter of Hulk Hogan).
The Panel has carefully scrutinized the Complaint, conducted factual and legal research, and come to the conclusion that Complainant's evidence is credible and its arguments are persuasive. A. Identical or Confusingly Similar
A complainant must describe "the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights." Rules, paragraph 3(b)(ix)(1).
Complainant's rights in the MARLBORO mark do not merit a long discussion. For more than 130 years, Complainant has used the MARLBORO mark in connection with cigarettes, has spent many billions of dollars advertising that mark, and has achieved unrivaled worldwide sales of its product.
Likewise, it is readily apparent that the disputed domain name, , is confusing similar to the MARLBORO mark. The most distinctive part of the disputed domain name is the word "Marlboro," which is identical to Complainant's famous mark. Moreover, Complainant frequently advertises its Marlboro Ranch in Montana. An Internet user, seeing the disputed domain name, would naturally associate it with Complainant. See Philip Morris USA Inc. v. Vyacheslav Pyatkovskiy, NAF Claim No. FA1312001534520 (2014) (ordering transfer of " to Complainant after finding the addition of the word "red" to the MARLBORO mark "does nothing to dispel the confusion" with the mark).
The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests
The second element a complainant must establish is "why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint." Rules, paragraph 3(b)(ix)(2).
Complainant has asserted, without contradiction, that Respondent has no trademark rights in the disputed domain name, that he has never received permission to use the MARLBORO mark, and that the two parties are not affiliated in any way. Respondent failed to respond. The Panel will infer from Respondent's silence that he has no facts to contradict Complainant's assertions. SeeTradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 ("Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts."). Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Finally, a complainant must show "why the domain name(s) should be considered as having been registered and being used in bad faith." Rules, paragraph 3(b)(ix)(3).
The Policy provides a non-exclusive list of circumstances which evince bad faith, including the deliberate registration of a confusingly similar domain name in order to intentionally divert Internet users to the Respondent's website. See Policy, paragraph 4(b)(iv). This is precisely what Respondent has done, according to Complainant.
There is no reason to doubt Complainant. Respondent registered the disputed domain name in February 2014, more than a century after Complainant first used its MARLBORO mark and more than a decade after Complainant purchased the Marlboro Ranch in Montana. Aside from the constructive notice provided by Complainant's United States federal trademark registration, it is practically certain that Respondent had actual notice of Complainant's mark when he used it to form the disputed domain name.
Respondent lives in Charlotte, North Carolina, which is far from the Marlboro Ranch in Montana and a world apart from the mythical western frontier popularized in Complainant's advertisements. A visitor to Charlotte is far more likely to run into a college professor than a cigarette-smoking cowboy. Nevertheless, Respondent is the one who actually lives in the heart of Marlboro Country. North Carolina is of the nation's largest producers of tobacco, its crops have been used to manufacture billions of cigarettes, and it is located next door to Virginia, where Complainant maintains its headquarters.
Given where he lives and the fame of Complainant's trademark, Respondent could not have been ignorant of Complainant's mark when he registered and used the disputed domain name. His actions were undoubtedly taken in bad faith. See Champion Broadcasting Sys., Inc. v. Nokta Internet Technologies,WIPO Case No. D2006-0128 ("In other words, the only use that Respondent made of the disputed domain name has been to free-ride on Complainant's good will. Numerous other panels have found bad faith when the registrant collects revenue from a 'parked' domain name … and so does this Panel.").
The Panel finds that the third element of the Policy has been established. 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.
Steven L. Snyder
Sole Panelist
Date: August 26, 2014
Full & Egal Universal Law Academy