The Complainant is Philip Morris USA Inc of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter LLP, United States.
The Respondent is Borut Bezjak, A Domains Limited of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with AlpNames Limited, Gibraltar (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2015. On July 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 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 July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Response was filed with the Center on July 31, 2015. The Complainant submitted an unsolicited supplemental filing on August 5, 2015. The Respondent submitted an unsolicited supplemental filing on August 11, 2015.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 13, 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 Complainant and the Respondent have both filed supplementary submissions in this proceeding. These submissions deal with certain issues that were not addressed in the Complaint. Therefore the Panel, in order to ensure the equality of the Parties and the opportunity to each of them to present its case, as stated under paragraph 10(b) of the Rules, has decided to accept them and to take them into account in this proceeding. 4. Factual Background
The Complainant manufactures, markets, and sells cigarettes in the United States. The Complainant and its predecessors have produced and sold Marlboro cigarettes since 1883.
The Complainant is the registered owner of the trademark MARLBORO with registration No. 68,502, registered in the United States on April 14, 1908 for cigarettes in International Class 34 (the "MARLBORO trademark"). The Complainant uses the MARLBORO trademark in connection with several variations of Marlboro brand cigarettes.
The Complainant has registered the domain name , and uses it for its official website, containing information about the Complainant and its Marlboro products.
The disputed domain name was registered by the Respondent on February 18, 2015. 5. Parties' Contentions A. Complainant
The Complainant contends that it has spent substantial time, effort, and money advertising and promoting the MARLBORO trademark throughout the United States, and has developed substantial goodwill in the MARLBORO trademark. The MARLBORO trademark has become distinctive and is uniquely associated with the Complainant and its products, and is well-known and famous throughout the United States.
The Complainant submits that the disputed domain name is confusingly similar to the MARLBORO trademark. It has long been recognized that consumers expect domain names incorporating a company's name or mark to lead to a website maintained by or affiliated with the trademark owner. A domain name is confusingly similar to a trademark where the domain name incorporates the trademark in its entirety. The addition of a Top-Level Domain ("TLD") such as ".party" is irrelevant when determining whether a disputed domain name is confusingly similar to a trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant or any of its products provided or sold under the MARLBORO trademark. The Respondent is not known by any name or trade name that incorporates the word "Marlboro", and has never sought or obtained any trademark registrations for "Marlboro". The Respondent has not received any authorization or consent to use the MARLBORO trademark in a domain name. The WhoIs record associated with the disputed domain name does not identify the Respondent by the disputed domain name.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith with full knowledge of the Complainant's rights in the MARLBORO trademark. The registration and use of the disputed domain name creates a form of confusion that attracts Internet users to the disputed domain name based on the use of the MARLBORO trademark. The Respondent has registered and is using the disputed domain name to trade on the goodwill of the Complainant's MARLBORO trademark by obtaining revenue from the click-through advertisements displayed on the website at the disputed domain name.
According to the Complainant, the characterization of "Marlboro" as a geographic term does not legitimize the Respondent's use of the disputed domain name. As the website at the disputed domain name shows, any notion that "Marlboro" is used as a geographic term is just a façade designed to divert Internet users seeking the Complainant's website to the Respondent's website. The Respondent's attempt to create a connection to a "Marlboro" place name does not justify the use of the MARLBORO trademark. The lack of association between the Respondent's website and any town called "Marlboro" is evident because most of the content on the website at the disputed domain name is listed on the thousands of other websites that the Respondent maintains, and the so-called "news" section of the Respondent's website is simply a list of articles that is automatically populated by stories including the word "Marlboro", most of which have nothing to do with any town called "Marlboro". The Respondent mentions several towns named Marlboro, but does not serve any particular one of them.
In its supplemental filing the Complainant disputes the Respondent's allegation that the latter was in the process of developing a bona fide offering of services by a network of websites which serve as informational portals for specific geographical areas and which provide a directory of local information relevant to each respective geographic location. According to the Complainant, the contents of the website at the disputed domain name contradict this assertion. This website contains no "local information" about any specific city, town, county or other geographical area named "Marlboro", contains no news for any "parties", real estate, services, businesses or any other nexus to any single "Marlboro" geographic location. The "News" section of this website is "scraped" from the Internet, and adds nothing of human value to what could be obtained from a search of the Internet. The Respondent is not developing an individual and dedicated website for any geographic location. The Respondent has not specified any particular "Marlboro" geographical location or provided information specific to that location. B. Respondent
The Respondent concedes that previous Panel decisions under the Policy have found that domain names that match a registered trademark are automatically found to be identical or confusingly similar and that the TLD is not taken into account for the purpose of deciding this issue.
On the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent submits that before receiving any notification of the dispute, it was in the process of developing a bona fide offering of services – a network of thousands of websites, which serve as informational portals for specific geographical areas and which provide a directory of local information relevant to each respective geographic location including lists of local events, directories of local services and businesses, news feeds and picture galleries. The disputed domain name is one of several thousand domain names that have been registered by the Respondent for this purpose, and it is intended to be used to serve content to those seeking information about the geographic location of Marlboro. The Respondent is operating a legitimate business activity as a developer of geographic portals or websites with links to information and commerce in the respective cities.
The Respondent states that the disputed domain name is being used for an activity other than in connection with the promotion and sale of tobacco products. The Respondent does not have a physical connection to the geographic location of Marlboro, but it has a justifiable need to use Marlboro as part of its wider business as a compiler and provider of information. The Respondent has developed or is developing individual and dedicated websites for each of the geographic locations about which it wishes to provide information and, in so doing, it requires the domain names that it employs for this purpose to include a geographic identifier for each location. The use of geographical identifiers in this way is critical to the success of the Respondent's business model, most notably for search engine optimization and ensuring that an end user is directed to one of the Respondent's websites when seeking certain information in respect of a geographical location, such as Marlboro.
The Respondent does not dispute that it has not received authorization to use the Complainant's MARLBORO trademark, but denies using the word "Marlboro" in a trademark sense. The Respondent did not choose the disputed domain name in an effort to capitalize on the Complainant's mark and is therefore utilizing the disputed domain name in connection with a bona fide offering of services.
The Respondent submits that it has not registered nor is it using the disputed domain name in bad faith. The Respondent has not at any time offered the disputed domain name for sale to the Complainant or to a competitor of the Complainant. The Respondent asserts that the announcement "we may be willing to sell the site" is merely an invitation to "treat" and not an offer to sell. The website to which the disputed domain name resolves contains information about the geographical location of Marlboro. The Respondent has registered several thousand geographical domain names that are identical to the names of towns, cities or geographical regions around the world and which resolve to websites displaying information about them. The disputed domain name and other domain names registered and used by the Respondent were automatically selected using an algorithm which identifies any town or city with a human population of more than 30,000 people and generates a list of recommended domain name registrations.
The Respondent alleges that it has developed, is developing and is exploiting an informational and geographical network of websites that provide information regarding large towns, cities and regions. The sole reason for selecting the domain name for each website is that they are equivalent to geographic locations. The predominant nature and purpose of the website to which the disputed domain name resolves is to provide event listings for the geographic location, although it does also provide other geographically relevant information (or is at least being developed to do so) such as news stories, weather and maps, amongst other relevant elements. Most, if not all, of the banners on the website to which the disputed domain name resolves relate to other freely accessible websites owned and operated by the Respondent. It is not the Respondent's objective to merely attract traffic in order to collect banner advertising or click‑through revenues, although it does not deny that there are click‑through banners present on the website to which the disputed domain name resolves, as there are with the other websites it operates.
In its supplemental submission, the Respondent stated that its business concept for the use of domain names it had registered in the ".party" TLD space was to use them for event and party listings and entertainer directories, while its business concept for the use of domain names it had registered in the ".trade" TLD space was to use them for local business, trade and services directories.
The Respondent submits that it creates its own content and also relies on outsourced tools to populate each of its websites with concept-related geographic information. Each tool relies on a search filter to push the correct geographic information to the Respondent's portfolio of ".party" and ".trade" websites. Whereas the tools are accurate in providing local information about a specific town or city, the search filters for the disputed domain name require a simple tweak to ensure that the tools service it the same way as the Respondent's other websites. The Respondent has not yet carried out this action so as not to interfere with the current proceedings. The sample of domain names registered by the Respondent in the ".trade" and ".webcam" new TLDs demonstrate a history of registering volumes of geographic domain names and that the Respondent is engaged in a consistent pattern of behavior when registering domain names for the purpose of developing geographic portals aligned with its business concepts. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the MARLBORO trademark. This trademark has been used for many years and, as acknowledged by other panels acting under the Policy, has gained a high level of distinctiveness in relation to tobacco products.
The disputed domain name consists of the elements "marlboro" and "party", separated by a dot. The first of these elements is distinctive and dominates the disputed domain name, and is identical to the Complainant's MARLBORO trademark. The second element is a non-distinctive and generic word that does not affect the overall impression created by the disputed domain name, and does not change the level of similarity between the MARLBORO trademark and the disputed domain name.
Taking all this into account, the Panel finds that the disputed domain name is confusingly similar to the MARLBORO trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name "Marlboro", that it is not affiliated with the Complainant, that it was not authorized or licensed to use the MARLBORO trademark, and has never sought or obtained any trademark registrations for "Marlboro".
In its defense, the Respondent submits that before receiving any notification of the dispute, it was in the process of developing a bona fide offering of services – a network of informational portals for specific geographical areas which provide a directory of local information relevant to each respective geographic location. The Respondent has registered several thousand geographical domain names that are identical to the names of towns, cities or geographical regions around the world and which resolve to websites displaying information about them. The disputed domain name is one of these domain names, and according to the Respondent is intended to be used to provide content to those seeking information about the geographic location of Marlboro. The Respondent maintains that it has a justifiable need to use the geographical term "Marlboro" to ensure that an end user is directed to the website at the disputed domain name when seeking certain information in respect of the geographical location of Marlboro. The Respondent also points out that the disputed domain name is being used for an activity different from the promotion and sale of tobacco products.
The Panel has reviewed the evidence in the case file and the content of the website to which the disputed domain name resolves. As contended by the Complainant, a large portion of the content of the website at the disputed domain name appears to be identical or similar to the content of other websites maintained by the Respondent, as the website also features links to these other websites and pay-per-clink links to third party websites. The website at the disputed domain name loosely refers in a few instances to a number of (different) geographical locations named Marlboro, and its content appears to have been aggregated from other websites. At the time of filing, it appears there was no local information (such as lists of local events, directories of local services and businesses, news feeds and picture galleries), relevant to any specific geographic location named Marlboro. It is not evident whether the Respondent is making any efforts to put on the website original content that will fulfill its stated purpose to be an informational portal for a specific geographic location named Marlboro. However, it should also be taken into account that the Respondent has registered the disputed domain name and hundreds of other domain names in 2015, so it would take certain time to fill the associated websites with original content. In any case, it appears to the Panel that the reason for the registration of the disputed domain name may have been to achieve better ranking of the associated website with search engines and extract profit from the pay-per-click links featured on it.
Given that the disputed domain name is one of thousands of domain names containing names of geographic locations that have been registered by the Respondent, it is unclear whether the Respondent has chosen the disputed domain name because of the distinctiveness and attractiveness of the MARLBORO trademark to which it is confusingly similar, or because it contains the name of a geographic location named "Marlboro". The Panel recognizes the risk that, under similar circumstances, an unscrupulous registrant may design its registration algorithm so as to target domain names for registration on the basis of their trademark value, under the guise of an otherwise legitimate business plan. The determination of these issues would have a considerable impact on the finding of the Panel whether the conduct of the Respondent amounts to a bona fide offering of services that may give rise to rights and legitimate interests of the Respondent in the disputed domain name. However, in view of its finding on the issue of bad faith, the Panel does not need to determine whether the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
(i) circumstances indicating that a respondent has registered or has acquired a 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 your documented out of pocket costs directly related to the domain name; or
(ii) that a respondent 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) that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith with full knowledge of the Complainant's MARLBORO trademark, and that the registration and use of the disputed domain name creates confusion that attracts Internet users to the disputed domain name based on the use of the MARLBORO trademark. According to the Complainant, the Respondent has registered and is using the disputed domain name to trade on the goodwill of the MARLBORO trademark by obtaining revenue from the click-through advertisements displayed on the website at the disputed domain name.
The Respondent disputes the contentions of the Complainant and states that the disputed domain name was chosen and registered because it contains the name of a geographical location. This statement is supported by a list of hundreds of domain names registered by the Respondent that contain names of other geographical locations around the world. The Complainant does not deny that the Respondent has registered these domain names or that it maintains at many of these domain names websites that are similar to the website at the disputed domain name. The registration of these domain names and the activation of the websites to which they resolve have taken place before the present proceeding. The Respondent states that the domain names that it has registered and uses were automatically selected using an algorithm which identifies any town or city with a human population of more than 30,000 people and generates a list of recommended domain name registrations.
Having reviewed the contentions of the Parties and the evidence in the case file as well as the content of the website at the disputed domain name, the Panel is not satisfied that these sources of information contain conclusive evidence showing that the Respondent has specifically targeted the Complainant's MARLBORO trademark when choosing and registering the disputed domain name and when setting up the associated website. The MARLBORO trademark is well known for tobacco products, but there are also a number of geographic locations named Marlboro in the United States and elsewhere, and the disputed domain name appears to be one of the hundreds of domain names of the Respondent that contain geographic names and that are linked to websites similar to the website at the disputed domain name. These domain names were registered and their websites were activated prior to the present dispute. While the Panel finds the Respondent's various assertions among its submissions in this proceeding create a scattered and opportunistic impression, that does not imply that the Respondent was targeting the Complainant on one domain name among the many registered of a consistent different type. At first glance, it also appears to the Panel that these other domain names do not incorporate other famous trademarks.
As discussed in relation to the issue of rights and legitimate interests, the website at the disputed domain name is not filled with original content about any specific geographic location, but it does not significantly refer to, offer or promote tobacco products either. Indeed, there is a single photo in its "Gallery" section taken from Flickr that depicts a smashed pack of Marlboro cigarettes. Also, as contended by the Complainant, the metatags of the website at the disputed domain name refer to various locations called "Marlboro"; the Complainant does not contend that these metatags refer to tobacco products or to the Complainant and its Marlboro cigarettes.
As stated previously, the Panel is cognizant that a large-scale domain registration operation such as presently considered may be used to mask or legitimize domain name registrations undertaken for bad faith purposes – such as to capitalize on the value of a well-known trademark. Furthermore, the Panel considers that registrants engaged in automated bulk transfer or registration of domain names have some level of responsibility to ensure that their algorithms and procedures avoid the selection and use of domain names based on their trademark value. In light of the evidence available to the Panel, several indicia exist which support the Respondent's asserted plans for the registration of geographically-related domain names, with nothing besides incidental commercial activity and occasional and neutral references to the Complainant for this Panel to weigh in opposition.
In view of the above, the Panel finds that the Complainant has not met its burden of proof to establish that it is more likely than not that the Respondent has registered and used the disputed domain name in bad faith by targeting the Complainant's MARLBORO trademark and attempting to extract profit from its popularity. The Panel notes that this finding is made only within the narrow scope of the Policy, and is without prejudice to any findings that a competent court may make using all procedural means for collection of evidence at its disposal, taking account of the future conduct of the Respondent, notably the incorporation of trademark-related commercial content relevant to this dispute, or efforts to sell the disputed domain name at a price apparently inconsistent with the plans asserted here by the Respondent. Future respondent conduct may also be relevant in the context of UDRP refiling principles. 7. Decision
For the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Date: September 11, 2015
Full & Egal Universal Law Academy