Complainant is Philip Morris USA Inc. of Virginia, United States of America (“USA”), represented by Arnold & Porter, USA.
Respondent is Gideon Black of Colorado, USA. 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 February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2015, 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 March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2015. The Respondent submitted an email message on April 9, 2015.
The Center appointed Mr. Frederick M. Abbott as the sole panelist in this matter on April 21, 2015. 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.
The Center transmitted Administrative Panel Procedural Order No.1 dated April 21, 2015, stating in relevant part as follows, to the parties:
This sole panelist has routinely noted in his decisions under the Policy that “The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond”.
By email dated April 9, 2015, Respondent indicated that he was delayed in filing a Response due to a serious car accident and injury which caused the delay. He claims he will be able to document this.
In light of this claim, and considering that the disputed domain name does not presently appear to be directed to a website hosting content, the Panel considers it appropriate to grant an extension to permit Respondent to file his Response.
Respondent has a period of seven (7) calendar days from transmittal of this notice by the Center to submit his Response to the Center, with copy to Complainant.
Respondent did not make any further submission within the time frame established by the aforesaid administrative order. 4. Factual Background
Complainant is the owner of registrations for the trademark MARLBORO in the United States, and has submitted evidence in the form of certificates of registration at the USPTO dating back to 1908.
Complainant has engaged in extensive advertising and promotion of its MARLBORO brand in connection with the sale of cigarettes in the United States and foreign countries. Complainant has referred to several previous panel determinations finding that its MARLBORO trademark is well-known and famous worldwide.
According to the Registrar’s verification Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on October 16, 2014, and Respondent has been the registrant since at least November 3, 2014.
As of the filing of the Complaint, the disputed domain name resolved to a webpage stating: “Website Coming Soon”.1
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the trademark MARLBORO, and that the MARLBORO trademark is well-known and famous throughout the United States.
Complainant contends that the disputed domain name is confusingly similar to its trademark, and that previous UDRP panels have determined that a domain name is confusingly similar to a trademark where it incorporates the mark in its entirety. Complainant argues that the disputed domain name “does not simply incorporate ‘marlboro’: it consists of ‘marlboro’ as the second level domain name, combined with the new top level domain ‘.reviews’.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is in no way associated with Complainant; (2) Respondent has not been known by the term “Marlboro”; (3) Respondent does not have rights in the trademark “marlboro”; (4) Respondent has not been authorized by Complainant use its MARLBORO trademark; (5) Respondent registered the disputed domain name knowing of Complainant’s trademark and seeking to take advantage of it; (6) because Respondent has failed to make any use of the disputed domain name, merely pointing it to an inactive site, Respondent has no rights or legitimate interests in the disputed domain.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have known of Complainant’s trademark when it registered the disputed domain name; (2) failure to respond to Complainant’s cease-and-desist and transfer demand is evidence of bad faith; (3) using the disputed domain name to divert Internet users to Respondent’s website demonstrates bad faith; (4) registration and use of the disputed domain name creates initial interest confusion; (5) associating the disputed domain name with an inactive website bolsters a conclusion of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark MARLBORO including by registration at the USPTO and use in commerce in the United States. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has rights in the trademark MARLBORO.
The disputed domain name incorporates Complainant’s MARLBORO trademark and adds the top level domain, “.reviews”. Complainant has argued that the disputed domain name creates initial interest confusion among Internet users because of the well-known and distinctive character of its trademark when combined with the descriptive noun or verb “reviews”. Respondent has not challenged this argument regarding confusing similarity.
The Panel determines that Complainant has rights in the trademark MARLBORO and that the disputed domain name is confusingly similar to its trademark. B. Rights or Legitimate Interests
In light of its determination regarding bad faith registration and use, the Panel need not decide whether Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
According to Complainant, Respondent is using the disputed domain name to resolve to an inactive website.2 Complainant bears the burden of demonstrating that Respondent registered and is using the disputed domain name in bad faith. Complainant has not presented evidence that Respondent plans to offer for sale or sell the disputed domain name to Complainant or a third party. Complainant has not presented evidence that Respondent has engaged in a pattern of registering the trademarks of third parties. Complainant has not presented evidence that Respondent is attempting to disrupt the business of a competitor. Complainant has not presented evidence that Respondent for commercial gain has intentionally attempted to attract Internet users to his website or other online location by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of his website or online location.
Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy; the Complaint must therefore fail. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M Abbott
Sole Panelist
Date: May 4, 2015
1 Prior to transmission by Complainant of a cease and desist and transfer demand to Respondent dated December 12, 2014, the disputed domain name resolved to a standard form parking page that included some links to services available from third parties (not associated with tobacco products or Complainant, e.g., “Online Content Now on TV”; “Cheap Flights”; “All Inclusive Cruise”).
2 Complainant provided evidence that at an earlier stage the disputed domain name resolved to a parking page that included links to third-party offerings of goods or services. Those links did not reflect any association with the goods offered under Complainant's mark. It is not clear from the screenshot provided by Complainant whether the parking page was a standard form used by the Registrar as a default for registrants that had not redirected their domain names, or something specifically chosen by Respondent. Complainant has in any case argued that Respondent should be found to have acted in bad faith because the disputed domain name resolves to an inactive website.
Full & Egal Universal Law Academy