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 MD Parrez Udin of Faridpur, Bangladesh. 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 May 9, 2016. On May 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 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 May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Center received an informal, third-party email communication on May 31, 2016.
The Center appointed Cherise Valles as the sole panelist in this matter on June 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.
On July 7, 2016, the Center received a supplemental filing from the Complainant. The Panel has considered that there are no special circumstances that necessitate consideration of the filing. Accordingly, the Panel does not consider the supplemental filing in rendering this decision. 4. Factual Background
The Complainant manufactures, markets, and sells cigarettes in the United States (and worldwide) under the MARLBORO trademark and variations thereof. It has done so for many decades: MARLBORO cigarettes have been made and sold by the Complainant since 1883, with the modern history of the brand beginning in 1955, and the Complainant has used the MARLBORO SMOOTH mark in United States commerce since 2007. The Complainant uses the MARLBORO trademark, and related marks including MARLBORO SMOOTH, in connection with the sale of its tobacco and smoking-related products in the United States.
The Complainant is the owner of multiple trademark registrations throughout the world, including in the United States, for the mark MARLBORO and related marks. These include the following:
- United States trademark Registration No. 68,502 for MARLBORO, registered on April 14, 1908 in the ‘cigarettes’ class;
- United States trademark Registration No. 938,510 for MARLBORO and the Red Roof design, registered on July 25, 1972 in the ‘cigarettes’ class;
- United States trademark Registration No. 3,289,674 for MARLBORO SMOOTH, registered on September 11, 2007 in the ‘cigarettes’ class;
- United States trademark Registration No. 3,289,675 for MARLBORO SMOOTH, registered on September 11, 2007 in the ‘cigarettes’ class;
- United States trademark Registration No. 3,430,525 for MARLBORO SMOOTH and the Teal Roof design, registered on May 20, 2008 in the ‘cigarettes’ class;
- United States trademark Registration No. 3,407,884 for MARLBORO SMOOTH and the Teal Roof design, registered on April 8, 2008 in the ‘cigarettes’ class.
The Complainant has also registered the trademark MARLBORO as a domain name under several generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) worldwide, among these; .
The disputed domain name was registered on October 13, 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, MARLBORO, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark, i.e., the complainant, establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in this proceeding and is therefore in default, and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b). A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the MARLBORO trademark. The Complainant is the owner of multiple trademark registrations in the United States for the trademark MARLBORO (as well as the word mark MARLBORO SMOOTH and the distinctive Red Roof and Teal Roof designs) as indicated in Section 4 above.
The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO and MARLBORO SMOOTH trademarks throughout the United States, and has developed substantial goodwill in these marks. Through the widespread use of the marks, these have become distinctive and are uniquely associated with the Complainant and its products. Numerous Panels have determined that the MARLBORO trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306.
The disputed domain name is confusingly similar to the Complainant’s trademark MARLBORO. The disputed domain name wholly incorporates the term “marlboro”, which is identical to the trademark MARLBORO registered by the Complainant in the United States, as indicated in Section 4 above. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy. See, for example, Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger,WIPO Case No. D2011-1675.
The addition of the generic words “cigarette” and “selling” in the disputed domain name does not distinguish the disputed domain name from the Complainant’s trademarks. Indeed, the Respondent’s use of the words “cigarette” and “selling” in connection with “Marlboro” increases the likelihood of confusion because the Complainant’s business is selling cigarettes. The public, seeing the disputed domain name, may be misled into believing that it is the Complainant selling cigarettes online under its MARLBORO trademarks.
The addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s mark. See, for example, LEGO Juris A/S v Mariusz Zielezny,WIPO Case No. D2010-0796.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 organization) 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.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant has registered the trademark MARLBORO in the United States. The Complainant submits that the Respondent is not in any way associated with the Complainant or any of the Complainant’s affiliates, or the Complainant’s products, and has never been known by any name or trade name that incorporates the word “Marlboro”. The Respondent has never received authorization or a license to use the Complainant’s MARLBORO mark in any way or manner, including registering a domain name containing the mark. The Complainant’s registration of the trademark MARLBORO and its domain name, , preceded the Respondent’s registration of the disputed domain name, as indicated in Section 4 above. Previous UDRP panels have found that in the absence of any license or permission from the complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, for example, Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188.
Furthermore, the disputed domain name resolves to a website that offers several varieties of MARLBORO and MARLBORO SMOOTH cartons of cigarettes for sale. It displays (without the Complainant’s authorization) cartons that display the famous MARLBORO word mark and trade dress (which includes the Red Roof and Teal roof designs). It appears these cigarettes are either grey market goods, meaning they are manufactured and destined for sale abroad, and are not allowed to be shipped into the United States, or are counterfeit cigarettes. Previous UDRP panels have held that the sale of counterfeit or grey market versions of a complainant’s goods does not constitute a bona fide offering of goods. The Respondent in this proceeding cannot be found to have any rights or legitimate interests in a domain name under the Policy.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of 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;
(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 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 the respondent’s website or location or of a product or service on its website or location.
As indicated in Section 4 above, the Complainant’s MARLBORO trademark was registered in the United States decades before the disputed domain name. The Respondent must have been aware of the existence of the Complainant’s rights in the trademarks when registering the disputed domain name. This is supported by the fact that the disputed domain name resolves to a website that sells grey market or counterfeit cigarettes designed to pass as the Complainant’s official products. Previous UDRP panels have held that the respondent’s knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith. See, for example, Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL,WIPO Case No. D2014-2264.
The Respondent’s use of the disputed domain name in such a way constitutes free-riding on the Complainant’s goodwill by diverting and misleading consumers looking for a website of or associated with the Complainant. The Respondent is attempting to redirect Internet users away from the Complainant’s legitimate website, in order for users to buy MARLBORO and MARLBORO SMOOTH cigarettes from the website to which the disputed domain name resolves. Previous UDRP panels have held that such activity demonstrates bad faith use under the Policy. See, for example, Popular Enterprises., LLC v. American Consumers First et al.,WIPO Case No. D2003-0742.
The registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the use of the Complainant’s MARLBORO trademarks. Previous panels have held that the sale of goods via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable. See Mattel, Inc. v. Magic 8 ball factory,WIPO Case No. D2013-0058. This is further evidence that the disputed domain name is being used in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: July 8, 2016
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