Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Branden Marks of West Hills, California, United States, self-represented. 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 February 21, 2017. On February 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. Respondent sent an informal email communication on March 1, 2017.1 The Center informed the Parties of the commencement of the Panel Appointment process on March 24, 2017.
The Center appointed Seth M. Reiss as the sole panelist in this matter on April 3, 2017. 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
Complainant manufactures, markets, and sells cigarettes in the United States and elsewhere, including cigarettes under the MARLBORO trademark. Complainant has sold its MARLBORO branded cigarettes since 1883 and owns United States Patent and Trademark Office trademark registrations for MARLBORO that date from 1908. In 2000, Complainant registered the domain name which it uses to point to the website "www." that promotes Marlboro branded products. Complainant claims its MARLBORO mark has become distinctive and uniquely associated with Complainant and Complainant's cigarette products.
The WhoIs records and the verification response provided by the Registrar show that the disputed domain name was registered on August 15, 2010, and that Respondent is the current registrant. According to Complainant, the disputed domain name was used previously to point to a "pay-per-click" ("PPC") directory. At the time of submission of the Complaint and at the time of this Panel's appointment, the disputed domain name pointed to an "under construction" website that exhibits the content "Website coming soon! Please check back soon to see if the site is available." 5. Parties' Contentions A. Complainant
Complainant contends that the domain name is identical or confusingly similar to the Complainant's MARLBORO mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith, and requests transfer of the disputed domain name. B. Respondent
Respondent did not submit any substantive response to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
"If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1.
The addition of the descriptive term "weed", or the generic Top-Level Domain ("gTLD") suffix ".com", fails to distinguish the disputed domain name from Complainant's MARLBORO mark and fails to avoid a finding of confusing similarity. WIPO Overview 2.0, paragraph 1.9. Philip Morris USA Inc. v. Andrew Soto,WIPO Case No. D2016-0247 ("The Panel agrees with Complainant that adding the descriptive terms 'weedman' and 'kush' to Complainant's trademarks will increase, not decrease, the likelihood of confusion…," ordering the transfer of domain names and to the complainant).
That the term "weed" may be perceived negatively to suggesting that Complainant markets or intends to market marijuana cigarettes under the Marlboro brand, does not negate a finding of confusing similarity. A "domain name consisting of a trademark and a negative or pejorative term (such as [trademark]) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements)." WIPO Overview 2.0, paragraph 1.3.
The Panel finds that the disputed domain name is confusingly similar to the MARLBORO mark in which Complainant has rights, and that the first element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
The consensus view of URDP panelists concerning the burden of establishing a lack of rights or legitimate interests in respect of a disputed domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
WIPO Overview 2.0, paragraph 2.1.
In the present case, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the disputed domain name. Sony Kabushiki Kaisha v. ,WIPO Case No. D2000-1074. By not submitting a response, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some rights or legitimate interests in the disputed domain name. Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0323.
Moreover, the case record is devoid of evidence demonstrating some rights or legitimate interests in Respondent in respect of the disputed domain name.
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC [pay per click] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' [see also paragraph 3.8 below] or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder."
WIPO Overview 2.0, paragraph 2.6
The Panel finds that Respondent has failed to establish some rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
This Panel agrees with other UDRP panels having concluded that the MARLBORO mark qualifies as a famous mark. See, e.g., Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide").
Evidence that Respondent registered and is using the disputed domain name in bad faith arises from the fame of the MALBORO mark and the fact its use by Respondent has been limited to pointing to PPC links and a "coming-soon" landing page.
Respondent could not reasonably claim to have been unaware of the rights Complainant holds in the MARLBORO mark at the time Respondent registered and began using the disputed domain name.
This same conclusion has been reached by multiple UDRP panels deciding cases involving domain names that incorporate the famous MARLBORO mark in its entirely. See, e.g., Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL,WIPO Case No. D2014-2264; and Philip Morris USA Inc. v. ADN HOSTING,WIPO Case No. D2007-1609 (it is "inconceivable" that the respondent "was not aware of the MARLBORO trademarks").
Respondent's use of the disputed domain name page to point to a PPC link and an "under construction" website is consistent, in the circumstances, with a finding of bad faith registration and use.
"With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)."
WIPO Overview 2.0, paragraph 3.2.
Here the circumstances include Respondent's incorporation in its entirely of a clearly famous mark into disputed domain name, Respondent's failure to make any substantive response to the Complaint, and limited use of the dispute domain name to earn PPC revenues. These circumstances considered together are, on balance, sufficient to reach a finding that Responded registered and is using the disputed domain name in bad faith establishing the third and final element of paragraph 4(a) 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 Complainant.
Seth M. Reiss
Sole Panelist
Date: April 16, 2017
1. On March 1, 2017, prior to the Center's notification of the Complaint to Respondent, Respondent emailed the Center posing the single statement "Would like to discuss my domain name with someone." The Center replied to Respondent, on March 3, 2017, explaining that the UDRP administrative proceeding had been commenced against him, that the Complaint and Notification had been sent to him the day prior, and that the due date for his response was March 22, 2017. The Center received no further communications from Respondent.
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