The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Muhammad Faisal of Sindh, Pakistan. 2. The Domain Name and Registrar
The disputed domain names and (the "Domain Names") are registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2016.
The Center appointed Geert Glas as the sole panelist in this matter on May 20, 2016. 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
Based on the Complainant's assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:
The Complainant is Philip Morris USA Inc., a company that manufactures, markets and sells cigarettes in the United States, including cigarettes under its famous MARLBORO trademarks. MARLBORO 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. For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
The Complainant is the registrant of the domain name , which it registered on March 6, 2002, and which it uses in connection with its primary website.
The Complainant is the owner of an extensive number of trademark registrations in the United States that consist of or include the mark MARLBORO. The Complainant's earliest MARLBORO trademark registrations in the United States date back to 1908.
According to the Complainant, it has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and has thus developed substantial goodwill in the MARLBORO trademarks.
According to the Registrar's WhoIs database, the Respondent has registered the Domain Names and respectively on October 25 and 27, 2015. The Domain Name contains the MARLBORO trademark in its entirety with the addition of the word "filter". The Domain Name contains the MARLBORO trademark in its entirety, with a single typographical variation (addition of the letter "o"). From the Complainant's annexes to the Complaint it is apparent that the Domain Name resolves to an inactive website displaying the following message: "This site can't be reached". The Domain Name points to a website showing directory links and displaying the following message "Sorry, we could not find ".
According to the Complainant, the Domain Names were previously masked by WhoisGuard, Inc., a domain name privacy registration service. The Domain Names, along with several other domain names, were previously the subject of two distinct UDRP proceedings that the Complainant filed on February 9, 2016 against WhoisGuard, Inc.. On February 17 and 22, 2016 the Center informed the parties that the Registrar had disclosed the registrant's names and contact information for the domain names and . From this disclosure the Complainant learned that Muhammad Faisal, the Respondent, is the owner of the Domain Names. The Complainant subsequently withdrew the proceedings against WhoisGuard, Inc. 5. Parties' Contentions A. Complainant
The Complainant requests that the Domain Names be transferred to it on the following grounds: (i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the Domain Names are confusingly similar to the MARLBORO trademarks. The Complainant contends in this respect that the first-level portion of the Domain Name contains the MARLBORO trademark in its entirety with the addition of the word "filter". The Complainant further contends that the Domain Name contains the MARLBORO trademark in its entirety, with a single typographical variation, the addition of the letter "o" in between the letters "b" and "r". Both the addition of the extra letter "o" in the Domain Name and the addition of the word "filter" in the Domain Name do nothing to alleviate any confusing similarity, and in fact may increase confusing similarity. Indeed, the use of the descriptive term "filter" in the Domain Name increases the likelihood of confusion to consumers as the term "filter" is descriptive of the products advertised by the Complainant, namely cigarettes with filters. Moreover, the Domain Name is visually and aurally identical to the trademark MARLBORO. (ii) The Respondent has no rights or legitimate interests in respect of the Domain Names
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, since Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the trademark MARLBORO.
The Complainant further contends that (i) before any notice to the Respondent of this dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods and services; (ii) the Respondent was never known by any name or trade name that incorporates the word "Marlboro."; and that (iii) the Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain, as the Domain Names point merely to inactive websites.
The Complainant contends that the Respondent's misappropriation of the MARLBORO trademark by inclusion in the Domain Names is no accident. Clearly, the Respondent chose to use this trademark to divert Internet users from the Complainant's website by capitalizing on the public recognition of the MARLBORO trademark. (iii) The Domain Names were registered and are being used in bad faith
The Complainant contends that it is highly unlikely that the Respondent was not aware of the Complainant's rights in the MARLBORO trademark at the time of the registration of the Domain Names on October 25 and 27, 2015. Indeed, the MARLBORO trademark has been in use since 1883.
Even apart from this, a simple Internet search would have revealed the Complainant's extensive use of the MARLBORO trademark as a source identifier for its tobacco products. The rights of the Complainant in the MARLBORO trademark would also have been obvious through basic domain name searches, Internet searches, and searches of the trademark records that are readily accessible online.
The Complainant further contends that it is well settled that the Respondent's very method — using the exact MARLBORO trademark to lure adult smokers to its web site — demonstrates bad faith use under the Policy.
Finally, the Complainant contends that the fact that the Respondent registered the Domain Names through a privacy shield service to hide its identity and contact addresses indicates registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered MARLBORO trademarks in the United States.
Firstly, the Domain Name incorporates the Complainant's MARLBORO trademark in its entirety and differs from the MARLBORO trademark only in that the suffix "filter" has been added. The addition of the word "filter" in the Domain Name does nothing to alleviate any confusing similarity, and in fact may increase confusing similarity. Indeed, the term "filter" is closely linked with cigarettes in that it is descriptive of filter cigarettes. Previous UDRP panels have found that a domain name which incorporated complainant's mark with a word that describes complainant's service is confusingly similar to complainant's mark because it falsely implies an association between respondent's website and complainant's mark (see, e.g., Philip Morris USA Inc. v. Mette Rasmussen, BornBring,WIPO Case No. D2016-0233 and M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts,WIPO Case No. D2015-1384 ).
In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253and Lilly ICOS LLC v. John Hopking/ Neo net Ltd.,WIPO Case No. D2005-0694).
Secondly, the Domain Name contains the MARLBORO trademark in its entirety, with a single misspelling of an element of the mark: a double instead of a single vowel "o" in between the letters "b" and "r". Previous UDRP panels have held that minor alterations cannot prevent a finding of confusing similarity between the trademark and the domain name (see, e.g., Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.,WIPO Case No. D2000-1259). The Panel is of the opinion that an Internet user could easily make a typing error: rather than typing the word "marlboro" to visit the Complainant's website, an Internet user could easily type a double "o" and be diverted to the Respondent's website.
The practice of "typosquatting" has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark (see, e.g., ACCOR v. Brigit Klostermann,WIPO Case No. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713). In addition, a visual and phonetic comparison between the trademark MARLBORO and the Domain Name shows a clear confusing similarity.
In light of the above, the Panel finds that the addition of the extra letter "o" to the Domain Name does not in the circumstances of this case sufficiently distinguish the resulting Domain Name from the Complainant's trademark.
Furthermore, the addition of the generic Top-Level domain ("gTLD") ".xyz" is not an element of distinctiveness that is generally taken into consideration when evaluating the identity and similarity of the Complainant trademark and the Domain Names, because gTLDs are a required element of every domain name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh,WIPO Case No. D2008-1382).
Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant's above mentioned trademarks. Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent),WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent, who was moreover hiding behind a privacy shield, has been commonly known by the Domain Names (see, e.g., Fry's Electronics, Inc v. WHOIS ID Theft Protection,WIPO Case No. D2006-1435). Further, the Complainant has never authorized the Respondent to utilize any of the Complainant's MARLBORO trademarks nor does the Complainant apparently have any relationship or association whatsoever with the Respondent.
Furthermore, the Complainant has provided evidence that the Domain Name resolves to an inactive website displaying the following message: "This site can't be reached". The Domain Name points to a website showing directory links and displaying the following message: "Sorry, we could not find ". Previous UDRP panels have found that passive holding of a domain name does not constitute a legitimate use of such domain name that would give rise to a legitimate right or interest in the name (see, e.g., Société Nationale des télécommunications: Tunisie Telecom v. Isamel Leviste,WIPO Case No. D2009-1529). As the Respondent is not actively using the Domain Names, the Panel is of the view that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
Moreover, the record before this Panel does not reflect any demonstrable preparations, which the Respondent has made prior to receiving notice of this dispute, to use the Domain Names in connection with a bona fide offering of goods or services. In light of the above, the Panel must conclude that the Respondent chose to use the MARLBORO trademark in connection with the Doman Names with the specific intent of capitalizing on a likelihood of confusion with the MARLBORO trademark in order to attract Internet users to the Respondent's websites and that such use cannot constitute a bona fide offering of goods or services.
Finally, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Names (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436),WIPO Case No. D2006-0230).
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Respondent's Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of bad faith:
(i) circumstances indicating that the respondent has registered or 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; or
(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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on your website or location.
Given that the MARLBORO trademarks are well-known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant's trademarks at the time the Domain Names were registered. Indeed, according to the Registrar's WhoIs database, the Respondent registered the Domain Names on October 25 and 27, 2015, more than a century after the Complainant first use in commerce of the MARLBORO trademark in 1883 and the Complainant's first MARLBORO trademark registration in 1908. Moreover, numerous UDRP panels already have determined that the MARLBORO trademarks are famous (see, e.g., Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306; Philip Morris USA Inc. v.Pieropan,WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614).
Prior UDRP panels have ruled that bad faith is established where a complainant's trademark has been shown to be well-known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435).
Moreover, it is well-settled case law that the practice of typosquatting may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2014-0816). The fact that the Respondent's Domain Name contains the MARLBORO trademark in its entirety, with a single misspelling of an element of the mark: a double vowel "o" in between the letters "b" and "r," constitutes indeed further evidence of this bad faith.
Consequently, the Panel finds that the Respondent registered the Domain Names in bad faith.
It clearly appears from the evidence provided by the Complainant that the Respondent registered the Domain Names with knowledge of the Complainant's MARLBORO trademarks for the purpose of diverting Internet traffic to its own site for commercial gain, and further shielding its identity to avoid accountability for its activity. In light of the above, the Panel must conclude that the Respondent both registered and used the Domain Names with the specific intent of capitalizing on a likelihood of confusion with the MARLBORO trademark in order to attract users to the Respondent's websites. This conclusion of bad faith is bolstered by the fact that the Domain Names resolve to inactive websites. Previous UDRP panels have found that passive holding of domain names pointing to inactive sites is evidence of bad faith, particularly in circumstances where, as here, the Complainant has a well-known trademark, that the Respondent has not replied to the Complaint, and the Respondent has concealed its identity (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
Moreover, the Respondent's failure to respond to the Complainant's contentions and, as a result, to provide any evidence whatsoever of any good faith registration or use of the Domain Names is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Names were registered and are being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a) of the Policy has been established. 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 Names, and , be transferred to the Complainant.
Geert Glas
Sole Panelist
Date: June 3, 2016
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