Complainant is Philip Morris USA Inc. of Richmond, Virginia, represented by Arnold & Porter, United States of America.
Respondent is Brian Roberts of Dudley, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “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 October 23, 2014. On October 24, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. An unsigned Response was filed with the Center on November 17, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 24, 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 has manufactured and sold cigarettes under the famous trademark MARLBORO for many decades. Complainant has long held numerous registrations of the MARLBORO mark, including registration 68,502 with the United States Patent & Trademark Office (USPTO), which dates back to 1908. There is no doubt that MARLBORO, as a source identifier for Complainant’s tobacco products, is one of the most famous trademarks in the world. Since 2000, Complainant has owned and operated the domain name to carry on its business and branding efforts via the Internet.
Respondent registered the Domain Name on April 6, 2014. The Domain Name is currently parked at a website apparently established by GoDaddy, the Registrar. This parking page contains a series of commercial hyperlinks, as well as a link asking the reader “Would you like to buy this domain?” 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three elements under the Policy required for a transfer of the Domain Name. B. Respondent
Respondent claims to have been born in Marlborough, Massachusetts (which is sometimes spelled Marlboro). Respondent’s current address is some 67 miles away from the town of Marlborough. In his Response, Respondent states:
“The domain name Marlborovaporlounge was registered as a demographical location associated within the town limits of Marlborough/Marlboro Massachusetts from which I have been working effortlessly to start up a small retail business.
Our intentions are in building a retail/wholesale e-cigarette, e-liquid, dry herb small business located in Marlboro/Marlborough Massachusetts. We have/had not considered/considerations or intentions of selling, renting or otherwise transferring the domain name for out of pocket costs related to the available domain name .
Marlboro Vapor lounge was not registered [sic] in any attempted [sic] to be associated with complainant, we have no similarities to/like complainant trademarks/service marks, the sole purpose for domain name is demographical locations. We have conducted our business approach in a fair business manner using open market opportunities not to be reflected or associated with complainant.
Marlboro Vapor lounge and complainant are not competitiors. Our opinion Phillip Morris ‘Marlboro’ association would not be of benefit. We have no interest or intentions to any disruptive practices or like assocaition [sic] concerning the complainant business.
Marlboro Vapor Lounge only purpose for the use of the name ‘Marlboro’ has been and will always be registered as a demographical location for future internet users to locate and gain access to our future store/stores location in Marlboro/Marlborough Massachusetts, Our future intentions of expanding into Northboro/Northborough and Westboro/Westborough Massachusetts, we will be registering websites under the abbreviate spellings Marlboro, Northboro and Westboro Vapor Lounge..” 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no question that Complainant holds rights in the famous mark MARLBORO. The Domain Name incorporates that famous mark in its entirety and adds the term “vapor lounge.” In the Panel’s view, the addition of the words “vapor lounge” does little to diminish the confusing similarity between the mark and the Domain Name. Given the fame of the mark and its close association with products that are smoked, and the fact that a “vapor lounge” would be the e-cigarette equivalent of a smoking lounge, the words “vapor lounge” may aggravate consumer confusion by suggesting that Complainant is now in the business of marketing electronic cigarettes under the MARLBORO mark.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.
It is undisputed that Respondent has not been authorized by Complainant to use its MARLBORO mark as a domain name or otherwise. Respondent claims to be working “effortlessly” (which the Panel will construe as a maladroit effort to say “tirelessly”) to start up a small retail business (consisting in “building a retail/wholesale e-cigarette, e-liquid, dry herb small business located in Marlboro/Marlborough Massachusetts”). Despite this claim, Respondent has provided absolutely no evidence of use, or demonstrable preparations to use, the Domain Name in the manner alleged. Nor has Respondent alleged (much less proven) that he or his alleged business is commonly known by the Domain Name, or that he is making a legitimate noncommercial or fair use of the Domain Name.
On this record, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv). The Panel concludes, on a balance of probabilities, that Respondent had Complainant’s famous MARLBORO mark in mind when registering the Domain Name. It is almost impossible to imagine that the supposed founder of a “vapor lounge” would be ignorant of one of the leading cigarette brands in the world. In the absence of any evidence of good faith demonstrable preparations to use the Domain Name in connection with a legitimate purpose, the Panel finds Respondent’s explanation of his motives to be pretextual. The Panel observes further that even a vapor lounge truly motivated by its location in Marlboro, Massachusetts would probably violate Complainant’s trademark rights. Complainant’s MARLBORO mark is so famous and longstanding that it would probably succeed in excluding even a true vapor lounge located in a town called Marlboro.
The Panel further finds bad faith use under the Policy. Complainant alleges, and Respondent does not dispute, that Respondent derives click-through revenues from the hyperlinks placed on the parking page to which the Domain Name resolves. Such conduct has been held to be bad faith use in other cases under the Policy. See, e.g., CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied. 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: December 8, 2014
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