The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter, United States.
The Respondent is Kevin Burrow, Saga Communications, Inc. of Melbourne, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Melbourne IT Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 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.
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 October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 10, 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 manufactures, markets, and sells in the United States and numerous other countries cigarettes, including cigarettes under its MARLBORO trademarks, including United States trademark registration no. 68,502 for MARLBORO registered on April 14, 1908 and United States trademark registration no. 938,510 for MARLBORO with Red Roof design, registered on July 25, 1972. Cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. The Complainant has for many years used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the world and, as a result, has developed substantial goodwill in those marks which have become distinctive and uniquely associated with the Complainant and its products.
The Complainant has registered the domain name which points to its website at "www.". The site enables access to information regarding the Complainant's Malboro products and special offers to age-verified adult smokers 21 years of age or older.
The Domain Name was registered on May 26, 2014. As of October 20, 2014, the Domain Name resolved to a message that a website associated with the Domain Name is "currently under construction".
The word "marlboro" has no separate or independent meaning apart from in relation to the Complainant or its products. 5. Parties' Contentions A. Complainant
The Complainant's case can be summarised as follows:
a) The Domain Name is confusingly similar to the MARLBORO trade mark as (i) it incorporates in its entirety Complainant's well-known and distinctive trademark, and (ii) the combination thereof with generic terminology is insufficient to distinguish the Domain Name from the Complainant's trademark.
b) The Respondent does not have any rights or legitimate interests in the Domain Name.
c) The Respondent has registered and used the Domain Name in bad faith as the only conceivable use for any website to which the Domain Name resolves would amount to an attempt to trade on the goodwill of the Complainant and the MARLBORO trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Over view 2.0") namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of registered trademarks consisting of the word "marlboro".
The Panel holds that the Domain Name is confusingly similar to the above trademark. The Domain Name, as registered by the Respondent, incorporates the MARLBORO trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The only differences in the present case are the insertion of hyphens and the addition of the generic words "lights" and "wholesale". These differences do not suffice to negate the similarity between the Domain Name and the Complainant's MARLBORO trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the MARLBORO trade mark. The Complainant has prior rights in the MARLBORO trade mark which precede the Respondent's registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the MARLBORO trademark, the evidence as to the extent of the reputation the Complainant enjoys in the MARLBORO trademark, the confusingly similar nature of the Domain Name to the MARLBORO trade mark, and the lack of any explanation from the Respondent as to why it registered the Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent at the Domain Name comprises a simple "under construction" notice which the Panel suspects is probably automatically generated. In the circumstances of this case, the Panel adopts the approach set out in the WIPO Overview 2.0 at section 3.2 as follows "With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)".
In this case given the highly distinctive nature of the Complainant's MARLBORO trademark, and the fact that the Domain Name combines that trademark with two other generic words both directly relevant to smoking products or their sale, leads the Panel to conclude the registration and use are in bad faith. The Panel cannot conceive of any credible use for the Domain Name that did not involve an attempt to trade off the Complainant's reputation and this must have been apparent to the Respondent when registering the Domain Name. Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists. Accordingly, and applying the principles in the below noted UDRP decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: December 15, 2014
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