The Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Jack Sparrow, Newport, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with L Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 1, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 6, 2016.
The Center appointed Martin Schwimmer as the sole panelist in this matter on December 22, 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 has exclusive rights in the MARLBORO trademarks. The Complainant manufactures, markets, and sells cigarettes in the U.S., 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 trademarks and variations thereof in connection with its tobacco and smoking-related products, including under United States Trademark Registration No. 68,502 for MARLBORO, registered on April 14, 1908.
The Complainant is the registered owner of the incontestable trademarks reflecting the MARLBORO trademark. Numerous UDRP panels have already determined the MARLBORO trademark to be famous (Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyP / Nicola Pieropan,WIPO Case No. D2011-1735).
The Respondent registered the disputed domain name on July 1, 2016. The disputed domain name points to an inactive website with a message "Unable to locate the server named www." and showing an error message. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the MARLBORO trademarks. Through widespread, extensive use in connection with its products, the MARLBORO trademarks have become uniquely associated with the Complainant and its products, and are well known and famous throughout the U.S. The Complainant's registrations for certain of the MARLBORO trademarks establish that it has rights in these trademarks under paragraph 4(a)(i) of the Policy.
The Complainant alleges that the disputed domain name reflects the Complainant's mark in its entirety. The term '-julygiveaway' is descriptive, as the Complainant will at times promote its product through giveaways of its products or of other items of value such as coupons. Further, previous UDRP panels have found that the addition of a generic Top-Level Domain ("gTLD") such as ".com" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416).
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word "Marlboro." The Respondent has never sought or obtained any trademark registrations for "Marlboro" or any variation thereof and indeed could never do so given the Complainant's pre-existing and exclusive rights to this mark. The Respondent has not received any license, authorization, or consent — express or implied — to use the MARLBORO trademarks in the disputed domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since.
With regard to bad faith, the Complainant notes that the Respondent's misappropriation of the MARLBORO mark by its inclusion in the disputed domain name is no accident. Clearly, the Respondent chose to use this trademark to capitalize on the association of the MARLBORO trademark with the Complainant's tobacco products. As one UDRP panel found in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, when a complainant's trademark is distinctive, it is "not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant," and thus an illegitimate "trader" could have no legitimate interest in the trademark. In fact, a previous panel commented in a case involving the Complainant that it was inconceivable for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks "given the longtime use of the MARLBORO trademarks and strength of its brand" (Philip Morris USA Inc. v. private,WIPO Case No. D2005-0790).
The Complainant argues that misappropriation of the MARLBORO trademarks does not give rise to a right or legitimate interest but, rather, portends the Respondent's bad faith (Fluor Corporation v. A Domain Privacy / Huanglitech, Domain Admin, WIPO Case No. D2010-0583). Use of the Complainant's trademark for the purpose of misleading or diverting consumers would not be bona fide and could not confer any rights or legitimate interests upon a respondent (CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyP / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680); Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
The Complainant further argues that the Respondent has registered the disputed domain name in bad faith with full knowledge of the Complainant's rights in the famous MARLBORO trademarks (Philip Morris USA Inc. v. ADN HOSTING,WIPO Case No. D2007-1609). Even a simple Internet search would have revealed the Complainant's extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. The Complainant's rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the United States Patent and Trademark Office ("USPTO") records that are readily accessible online.
The Complainant notes that Respondent's alleged name, Jack Sparrow, is the name of a famous fictitious character from the "Pirates of the Caribbean" movies. The Complainant alleges that there is no evidence of a Jack Sparrow living in Newport, New York, the town identified as that of the Respondent in the WhoIs database. Accordingly, Respondent's WhoIs information is fraudulent and thus is further evidence of bad faith use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name incorporates the Complainant's famous MARLBORO trademark in its entirety with the addition of the descriptive term "-julygiveaway." As the term is descriptive of a method by which companies, including the Complainant, promote their products, namely giving away samples or other items of value, the term may be disregarded in this instance. The Panel also notes that the gTLD suffix may be disregarded. Thus, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's mark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no form of association with the Complainant that would allow it to utilize the Complainant's trademark. Furthermore, the Respondent's organization name, Jack Sparrow, is not reflected in the domain name (see further discussion in Section C below). The Complainant has made a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, thus shifting the burden of production on to the Respondent. See Philip Morris USA Inc. v. Mary Shelly,WIPO Case No. D2006-1367.
The Respondent has not responded to the Complainant's contentions. The disputed domain name is inactive. The disputed domain name immediately connotes for this Panel a website from or authorized by the source of MARLBORO-brand cigarettes. Thus, it is hard to envision any fair use by an unauthorized third-party. In light of the Complainant's unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It is easily demonstrated by referencing the numerous UDRP decisions holding as such, that the Complainant's MARLBORO trademark is a famous trademark.. The Respondent has failed to establish rights or legitimate interests in the disputed domain name. As indicated above, the website resolves to an inactive page. The passive holding of a domain name reflecting a famous trademark has frequently been found to be bad faith registration. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Further, the Panel notes that Respondent's putative name, "Jack Sparrow", is also the name of a well-known character from the "Pirates of the Caribbean" movies. Considering as well the incomplete street address in the WhoIs database, the Panel concludes that the WhoIs information is fraudulent. The Panel may draw negative inferences against the Respondent from fraudulent WhoIs information as well as from the Respondent's default.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has met the requirements of 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.
Martin Schwimmer
Sole Panelist
Date: January 10, 2017
Full & Egal Universal Law Academy