1.1 The Complainant is Philip Morris USA Inc. of Virginia, United States of America (“US”), represented by Arnold & Porter, US.
1.2 The Respondent is Vivek Singh / Marlboro Beverages of Uttar Pradesh, India. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2014. On August 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 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.
3.2 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”).
3.3 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 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 18, 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
4.1 The Complainant is a well-known manufacturer and seller of cigarettes. It is based and incorporated in the State of Virginia, US. Its business can be traced back to 1883 and it has used the term “Marlboro” in connection with its products for many decades.
4.2 It is the owner of various trade marks that incorporate the term “Marlboro”. One of these is US Registered trade mark no. 68,502 in class 34 with a registration date of April 14, 1908 which takes the following form:
4.3 The Complainant also operates a website from the domain name , which (subject to age verification) it uses to promote its products.
4.4 It is not entirely clear who or what the Respondent is, but from the publically available WhoIs information for the Domain Name it would appear that the registrant of the Domain Name is an individual located in India. The Domain Name was first registered in February 2014 and has been used since that date for what appear to be a “holding page” operated by the Registrar. The Complainant’s evidence shows that as at August 12, 2014, the page displayed from the Domain Name incorporated the following text:
Welcome to
M
Learn how you can get this domain | See more domains like this
This Web page is parked FREE courtesy of GoDaddy
4.5 As at the date of this decision it appears that the holding page also displays sponsored links (at least to a person accessing that page from the United Kingdom; the country where the Panel is located). 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to its business and trade marks and contends that it has spent substantial time, effort and money advertising its MARLBORO marks in the US. It also refers to a series of previous cases under the Policy in which panels have found that the MARLBORO mark is “famous world-wide”. The most recent of these is Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013‑1306 (September 17, 2013).
5.2 The Complaint claims that the Domain Name is being used for a directory site with to numerous links to other sites, including those relating to job openings and insurance (although the nature of the links is said to be prone to change). It contends that these are pay-per-click links and that the Respondent receives revenue when Internet users click on those links.
5.3 The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) paragraph 1.1 in contending that it has trade mark rights within the scope of paragraph 4(a)(i) of the Policy. It also contends that the Domain Name is confusingly similar to that trade mark in that it incorporates the mark in its entirety and that the addition of the term “beverages” does not distinguish the Domain Name from the mark. It also claims that the addition of the generic Top-Level Domain (“gTLD”) “.com” is said to be irrelevant to that analysis.
5.4 The inclusion of the MALBORO mark in the Domain Name is characterized as a “misappropriation” and is said to be “no accident”. It is alleged that the “Respondent chose to use this trademark to draw Internet users to his website by capitalizing on the association of the MARLBORO® mark with PM USA’s tobacco products”. It contends that the Respondent’s objective from the start was to divert Internet users to a parking page. In light of these alleged facts, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name.
5.5 The Complainant also contends that there is “no doubt that [the] Respondent was aware” of the Complainant’s mark when the Respondent registered the Domain Name. It also contends that it would have been easy to establish by searches on the Internet, domain name searches and “searches of the PTO records that are readily accessible online” and that the Respondent thereby had constructive notice of the Complainant’s trade marks.
5.6 Given this and the use made of the Domain Name, the Complainant maintains that the Domain Name was registered and used in bad faith. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant clearly has trade mark rights in various marks that incorporate the term Marlboro. The marks relied upon by the Complainant appear not to be word marks but one of those marks (i.e. US registered trade mark no 68,502) comprises that term in stylized text. The Panel also accepts that the only sensible reading of the Domain Name is as a combination of the terms “Marlboro” and “beverages” together with the “.com” gTLD. Given this, the Panel accepts that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
6.5 The Panel disagrees with the Complainant’s contention that the gTLD in a domain name is “irrelevant” when it comes to comparing mark and domain name for the purposes of paragraph 4(a)(i) of the Policy. This is so notwithstanding the fact that there are a large number of decisions under the Policy in which this is claimed to be the case.
6.6 The Panel is also aware that this issue is addressed in paragraph 1.2 of the WIPO Overview 2.0, which contains the following statement:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”
6.7 However, in this Panel’s opinion there is no real logical reason why the Top-Level Domain (“TLD”) should only be considered when the mark contains a “top-level suffix”. In this Panel’s view when comparing a domain name and the trade mark for the purposes of the Policy, it is always the mark as a whole and the domain name as a whole that should be compared. There is nothing in the wording of the Policy that suggests that the exercise should be a comparison of some sub-set of either and if as a matter of course certain parts of a mark or a domain name are ignored, there is a danger that the elements of the mark or name that remain will be considered out of context and given undue weight.
6.8 Nevertheless, whether this is right or wrong in most cases it is an academic question. The reasons for this were set out by this Panel in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227 (one of the cases cited in paragraph 1.2 of the WIPO Overview 2.0). In short, in the opinion of the Panel, paragraph 4(a)(i) of the Policy sets out a low threshold test. That test will usually be satisfied where a domain name comprises the entirety of the mark relied upon regardless of what other words may be incorporated in the domain name and what TLD is used. So far as the TLD is concerned there is also the fact that in many cases the TLD in the domain name will be seen (in the words of paragraph 1.2 of the WIPO Overview 2.0) as a technical requirement of registration. However, there may be cases where it is not. As this Panel stated in the Research in Motion Limited v. One Star Global LLC, supra:
“Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.9 In this particular case, as the trade mark relied upon is not just the word “Marlboro” alone, but that word in a distinctive font, strictly this is not a case where the domain name incorporates the Complainant’s mark in its entirety. However, this does not change the outcome of the relevant comparison. When the relevant trade mark and the Domain Name are compared, the Complainant easily satisfies the requirement of establishing confusing similarity. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.10 Although the Complainant contends that the Domain Name has since registration been used for a pay-per-click web page, the evidence filed by the Complainant to support that contention does not actually show the use of any pay-per-click links. Nevertheless it is a contention that is not disputed by the Respondent and it is consistent with the use of the Domain Name at the date of this decision. The Panel is therefore prepared to accept that this claim is factually correct.
6.11 The registration of a domain name for use in connection with a page that displays pay-per-click links does not provide a rights or legitimate interests if that use is intended to capitalise on the reputation and goodwill of a third party’s trade mark (as opposed to descriptive or generic terms in the domain name). In this respect, see paragraph 2.6 of the WIPO Overview 2.0. Indeed, such activity will usually constitute positive evidence of a lack of rights or legitimate interests (see, for example, this Panel’s decision in Premier Farnell Corp. v. BlueH, Bluehost Inc / Newark del Peru S.A.,WIPO Case No. D2010-2111).
6.12 For the reasons that are set out under the heading “Registered and Used in Bad Faith” below, the Panel finds that the Domain Name has been registered with either this use in mind or some other use that would take unfair advantage of the reputation of the Complainant’s MARLBORO marks. In the circumstances, the Complainant has sufficiently shown that the Respondent has no rights or legitimate interests in the Domain Name and made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.13 The Panel accepts, given the reputation of the Complainant’s mark and the fact that the term “Marlboro” has no obviously generic or descriptive use in the hands of a registrant in India, that the Domain Name was registered with knowledge of the Complainant’s marks. Contrary to what the Complainant contends, the Panel does not accept that this is a case where the doctrine of constructive notice is of any value (see the discussion of the relevance of this concept to proceedings under the Policy at paragraph 3.4 of the WIPO Overview 2.0). The finding of the Panel is one of actual knowledge.
6.14 Further, for the reasons already explained, the Panel accepts that the Domain Name has been used for a pay-per-click page. That use on this occasion falls within the scope of paragraph 4(b)(iv) of the Policy. There is no evidence before the Panel that any links displayed refer to the Complainant’s product or link to competitors of the Complainant. Indeed, insofar as the Complainant identified the nature of those links, they are said to related to “job openings and insurance”. However, the Panel does not consider this to be significant, where, as here the most sensible reading of the term “Marlboro” is as a reference to the Complainant’s mark and there is no evidence of use taking advantage of any generic or descriptive reading of that work. In such circumstances, users are still being drawn to the pay-per-click page by reason of the reputation of the mark alone and someone (whether that be the Respondent and/or the operator of the pay-per-click page) is commercially gaining by reason of that use.
6.15 Further, this is a case where the nature of the Domain Name is such that it is difficult to conceive of any use that this Respondent might make of the Domain Name without the Complainant’s consent that would not involve bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management,WIPO Case No. D2008-0455).
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: September 19, 2014
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