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 Uddin of Tarapur, Noapara, Madukhali, 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 July 13, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondent did not submit any response save for its email communications to the Registrar of July 22, 2016. The Center notified the Respondent’s default on August 17, 2016.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 24, 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
The Complainant is the proprietor of the trademark MARLBORO, which is registered inter alia with the United States Patent and Trademark Office under no. 68,502 as of April 14, 1908. The disputed domain name was registered on March 30, 2016. 5. Parties’ Contentions A. Complainant
The Complainant’s trademark MARLBORO has been used since 1883. Several prior UDRP panelists have determined that the Complainant’s trademark is famous for cigarettes. The Complainant has also registered the domain name .
The disputed domain name is confusingly similar to the Complainant’s trademark. It incorporates the trademark in its entirety and merely adds to it the generic words “red”, “cigarettes” and “online”, which are insufficient to remove likelihood of confusion with the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademark or the disputed domain name. The Respondent is not commonly known by any name containing the word “Marlboro”. The Respondent is also not making legitimate noncommercial use of the disputed domain name, because the website to which the disputed domain name resolves offers for sale cigarettes.
The Respondent was fully aware of the Complainant’s trademark when registering the disputed domain name. The Respondent has also registered another domain name infringing the Complainant’s trademark and has engaged in a pattern of infringing domain name registrations.
The Respondent is using the Complainant’s trademarks to divert Internet users from the Complainant’s true website. Also the inclusion of the words “cigarettes” and “online” signify a deliberate, bad faith attempt to capitalize on the fame of the Complainant’s trademark. The disputed domain name is used to offer grey market or counterfeit cigarettes. Hence, the Respondent is using the Complainant’s trademark to attract Internet users to his website for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has shown that it is the proprietor of the registered trademark MARLBORO, which is well-known at least for cigarettes as held by many other panels in UDRP decisions. The disputed domain name incorporates the Complainant’s trademark in its entirety combined with the generic words “red”, “cigarettes” and “online”.
In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), noting that the disputed domain name consists of the Complainant’s trademark along with descriptive words, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Respondent has not rebutted these arguments.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or 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; 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 or 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 [the respondent’s] website or location.”
The Panel has found above, in accordance with many other UDRP panels, that the Complainant’s trademark MARLBORO is a well-known trademark. It is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when he registered the disputed domain name. This is also supported by the fact that the disputed domain name includes the word “cigarettes”, for which the Complainant’s trademark is well-known.
The disputed domain name resolves to a website offering for sale cigarettes and other tobacco-related goods. The Respondent has therefore attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: September 2, 2016
Full & Egal Universal Law Academy