The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("USA" or "United States"), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Zhang Liu Dong of Zhengzhou, Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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. On March 13, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted an amended Complaint on March 13, 2017.
The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceeding commenced on March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 10, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on April 19, 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
The Complainant manufactures, markets, and sells cigarettes, including cigarettes under its MARLBORO trademarks. The Complainant is the registered owner of the trademarks MARLBORO and MARLBORO and Red Roof design, among others, on the principal register of the United States Patent and Trademark Office ("USPTO") for cigarettes (including registration no. 68,502 on April 14, 1908). The Complainant has not identified any registrations outside the United States in its Complaint.
The Respondent registered the disputed domain name on November 20, 2016.
The disputed domain name resolves to a website which displays and offers for sale numerous cigarette products bearing the Complainant's trademarks as well as cigarettes of other brands. One of the pages is headed "Marlboro" and has pictures of Marlboro cigarette packages as well as those of other brands. Internet users can buy cigarettes from the website under the disputed domain name. The Respondent has also included on its website a copyright notice incorporating the MARLBORO Mark that reads "© 2009‑2015 cheap marlboro Cigarettes sale Copyright and All rights reserved." 5. Parties' Contentions A. Complainant Identical or confusingly similar
The Complainant argues that the disputed domain name made up of the registered trademark MARLBORO combined with the generic or descriptive words "cheap", "cigarettes" and "sale" is, therefore, confusingly similar to the Complainant's registered trademarks MARLBORO. No rights or legitimate interests
The Complainant relies on three grounds to argue the Respondent has no rights or legitimate interests. These are:
(a) The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for MARLBORO.
(b) The Respondent is trying to profit from consumer confusion by using "Marlboro" in a domain name on a website selling cigarettes, that is, it is trying to pass itself off as the Complainant.
(c) The Respondent is trying to use the mark to divert consumers.
While not stated explicitly in the submissions under rights or legitimate interests, these arguments appear to be based on the allegation made in the Complaint by the Complainant that the Respondent is selling grey market goods (the import of which is said to be illegal in the United States) or counterfeit goods. Registered and used in bad faith
There is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant's rights in MARLBORO and could also have by a simple Internet search confirmed this. The unauthorized sale of cigarettes by the Respondent is use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding be in English on the grounds that the language of the website associated with the disputed domain name is entirely in English, evidencing the Respondent's level of comfort with the English language.
The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.
The website under the disputed domain name is written entirely in English and designed to do business worldwide in English. It would appear that the Respondent is able to handle these proceedings in English.
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. As the only documents before the Panel are in English, the decision will be issued in English. 6.2 Substantive Matters A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark MARLBORO combined with the descriptive words "cheap", "cigarettes" and "sale" and the generic Top-Level Domain ("gTLD") ".top". The addition of the descriptive words serves to deliver the message that the site under the disputed domain name is selling cheap Marlboro cigarettes. The Panel finds that the disputed domain name is confusingly similar to the trademark MARLBORO.
The Panel notes that the Complainant has not asserted any trademark rights in China where the Respondent is based. However, the website under the disputed domain name specifically states that it will make sales to the United States where the Complainant has asserted rights. In any event, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. Such factors may, however, bear on a panel's determination whether the respondent has registered and is using the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview 2.0 provides:
"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 a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP."
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
"(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 has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
However, the circumstances of this case do require the Panel to consider paragraph 4(c)(i). The Respondent is using the website under the disputed domain name to offer cigarettes. The question is, is such use bona fide? The principal basis that the Complainant asserts the Respondent has no rights or legitimate interests is that it is selling grey market goods (the import or which are illegal into the USA) or counterfeit products.
However, the Complainant has only made bare assertions without providing any evidence that the products are counterfeit or, if they are grey market goods, what laws are being breached. The Panel is not prepared to accept these bare assertions and will proceed to decide the case on the basis the Respondent is selling genuine products at a discount.
A very similar issue was considered in relation to Marlboro cigarettes by the panel in Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946. In that case, genuine Marlboro cigarettes were being sold on the site under the disputed domain name. The website featured prominently the Marlboro and Red Roof design. The panel in that case stated: "in principle, it is not an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark." This Panel agrees with that view.
The website under the disputed domain name does appear to sell cigarettes other than the Complainant's. There are links to brands such as "Dunhill" and "Lucky Strike" which the Panel believes are not brands of the Complainant. However, no evidence of this has been included in the Complaint. If there was such evidence, that might be sufficient to make a finding that the offering made by the Respondent was not bona fide. In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 the Panel found that in order for there to be bona fide dealing in genuine goods or services, the domain name holder must use the site to sell only the trademarked goods.
The Panel also does not accept that the Respondent is necessarily passing itself off as the Complainant. The name of the website indicates clearly that it is selling cheap cigarettes. The website states that the Respondent is a wholesaler, but that it will also sell in retail quantities. There is no claim that the website is related to the Complainant other than that it is selling its cigarettes. It is, in this Panel's view, unlikely that any visitor would assume this was an official website of the Complainant.
Nevertheless, the website under the disputed domain name does have some indicia that suggest the use of the disputed domain name is not bona fide. In particular, the "about us" and "contact us" pages do not resolve to active pages. It is impossible to identify who the actual seller is. The copyright notice refers to "© 2009-2015 cheap marlboro Cigarettes sale". This is not a reference to a company or a person. The email address given under the live chat link on the site is to a hotmail account. These factors all indicate that the offering of the cigarettes is in some way not bona fide. A bona fide seller of products would provide proper contact details and identify themselves properly.
The Panel, therefore, finds the Respondent is not making bona fide use of the disputed domain name. It has not responded to assert that it has any other rights or interests in the trademark MARLBORO. Accordingly, the Panel finds it has no rights and legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Given its findings in relation to rights and legitimate interests, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: April 25, 2017
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