The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("US"), represented by Arnold & Porter Kaye Scholer LLP, US.
The Respondent is Ky Le of Beaverton, Oregon, US, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2017. On March 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both disputed domain names 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 April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. Upon request by the Respondent, the Center granted an extension of Response due date until April 30, 2017. The Response was filed with the Center on April 30, 2017. On May 4, 2017, the Center received a supplemental filing from the Complainant.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 12, 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 is a leading tobacco products manufacturer located in Virginia, US. For more than a century, the Complainant and its predecessors in interest have used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products. The Complainant owns US Trademark Registration Nos. 68502 for the trademark MARLBORO (registered April 14, 1908) and 938510 for the trademark MARLBORO and design (registered July 25, 1972). The Complainant has registered the domain name . This domain name points to the Complainant's website, providing information about the Complainant and its MARLBORO-branded products.
The Respondent registered the disputed domain names and on October, 9, 2016, and October 10, 2016, respectively. The disputed domain names do not resolve to active websites. Instead, the resolving websites state: "Website coming soon! Please check back soon to see if the site is available". 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant owns the MARLBORO trademark and is the owner of corresponding trademark registrations. Numerous UDRP administrative panels already have determined that the MARLBORO trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyP / Paundrayana W,WIPO Case No. D2012-0660; Philip Morris USA Inc. v. Pieropan,WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton Int'l Ltd.,WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614.
The disputed domain names are confusingly similar to the MARLBORO mark. The disputed domain names incorporate the MARLBORO mark in its entirety. Consumers expect that a domain name that incorporates a company's name or mark will lead to a website maintained or affiliated with the company. The addition of the terms "weed" and "cigarette" in the disputed domain names only exacerbates public confusion because it falsely suggests that the Complainant does or intends to produce marijuana cigarettes. The addition of the generic Top-Level domain ("gTLD") ".com" is irrelevant in determining whether the disputed domain names are confusingly similar to a protected mark.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, its affiliates or any of the products provided by the Complainant under the MARLBORO mark. The Respondent has never been known by any name or trade name that incorporates "Marlboro." The Respondent has never sought or obtained any trademark registrations for "Marlboro" or any variation thereof. The Respondent has not received any license, authorization or consent, express or implied, to use the Marlboro mark in a domain name or in any other manner. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent chose to use the MARLBORO mark to divert Internet users from the Complainant's website "www." by capitalizing the association of the MARLBORO mark with the Complainant's tobacco products. When a complainant's trademark is distinctive, it is not one that domain name registrants would legitimately choose unless seeking to create an impression of an association with that complainant. Such illegitimate users, such as the Respondent, could not have legitimate interests in the domain names. That the Respondent registered multiple domain names including the "Marlboro" name is itself evidence of the Respondent's bad faith.
The Respondent registered and is using the disputed domain names in bad faith. The Respondent registered the disputed domain names with full knowledge of the Complainant's rights in the MARLBORO mark, which predate the Respondent's registration of the disputed domain names by decades. The MARLBORO trademark has been in use for more than a century, whereas the Respondent registered the disputed domain names just recently in October, 2016. Additionally, a simple Internet search would have revealed the Complainant's extensive use of and rights in the MARLBORO trademark. The Respondent has constructive knowledge of the Complainant's rights by virtue of the Complainant's federal trademark registrations for the MARLBORO trademarks.
The Respondent is using the disputed domain names in bad faith. The Respondent's use of the MARLBORO mark to divert Internet users from the Complainant's website demonstrates bad faith use of the disputed domain names. Additionally, the pairing of the Complainant's mark with the term "weed", which is synonymous with "marijuana", indicates bad faith because marijuana is unlawful under US federal law and the law of some states. The Respondent has intentionally tarnished the Complainant's trademark. Moreover, the registration and use of the disputed domain names creates a form of initial interest confusion, which attracts Internet users to the disputed domain names based on the use of the MARLBORO mark. The fact that the disputed domain names do not point to active websites does not prevent a finding of bad faith use, but actually bolsters this conclusion where other indicia of bad faith are present.
The Complainant requests that the disputed domain names be transferred to it. B. Respondent
The Respondent argues that the Complainant has established a history of use of the MARLBORO trademark in connection with tobacco products. However, the Complainant has not established that it has rights in the MARLBORO trademark in the marijuana or cannabis industry. The same mark can be used by different owners in connection with different goods without infringement. As an example, the Respondent cites DELTA-brand faucets and DELTA-brand airline services. Accordingly, the Respondent argues that the Respondent may use the MARLBORO trademark in connection with the cannabis industry. The Complainant has not established any intention to use its MARLBORO mark in the cannabis industries.
The Respondent states that it has not made clear whether the disputed domain names will be used in connection with "consumer advocacy site[s] regarding 'Marlboro' brand of 'weed' products." Therefore, the Complainant's claim is premature.
The Respondent requests that the Panel deny the Complainant's request for transfer. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain names are 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 disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to a mark in which the Complainant has rights. The Complainant and its predecessors in interest have used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products since 1883. The Complainant is the registered owner of corresponding trademark registrations, which establish that it owns rights in the MARLBORO trademark. The Panel accepts that the Complainant's trademark is well known.
The disputed domain names are confusingly similar to the MARLBORO trademarks. The disputed domain names are composed of the MARLBORO trademark in its entirety and the terms "weed" and "cigarette(s)" and the gTLD ".com." The addition of the descriptive terms "weed," "cigarettes," or "cigarette" in the disputed domain names does not distinguish the disputed domain names from the Complainant's trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition("WIPO Jurisprudential Overview 3.0"), paragraph 1.8. Additionally, the ".com" gTLD extension being a technical part of a domain name does not affect the assessment of whether the disputed domain names are confusingly similar to the Complainant's mark. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain names.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the disputed 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 used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are not used in connection with any active websites other than a parking page to indicate that a website is coming soon, akin to passive holding. Nor has the Respondent demonstrated preparation to use the disputed domain names in connection with a bona fide offering of goods or services. Even the Respondent acknowledges that the "Respondent . . . has not made it clear" how the disputed domain names will be used.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant states, and the Respondent does not deny, that the Complainant never licensed, authorized or consented to the Respondent's use of the MARLBORO mark or to register a domain name including the mark.
Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. Indeed, both disputed domain names point to websites under construction. The Respondent suggests that the disputed domain names might be used in connection with a consumer advocacy website in the future. First, the mere possibility of such use does not create any rights or legitimate interests for the Respondent. Second, the Respondent's own claim that the consumer advocacy website would be "regarding a 'Marlboro' brand of 'weed' products" indicates that the Respondent is referring to a commercial and/or promotional use, not a fair, noncommercial use of the disputed domain names. C. Registered and Used in Bad Faith
The Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 disputed domain name; or
(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed 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 such website or location or of a product or service on such website or location.
The Respondent registered the disputed domain names in bad faith. The Respondent was undoubtedly aware of the Complainant and its MARLBORO trademark at the time of registration of the disputed domain names (the Respondent's own response admits this) and that such registration was in bad faith. The Complainant and its MARLBORO trademark are known widely and throughout the US, where the Respondent is located. The MARLBORO mark has been in use for more than a century. The Respondent is on constructive notice of the Complainant's trademark rights by virtue of the Complainant's trademark registration. Although the Respondent is not under an obligation to conduct an exhaustive trademark search, a simple Internet search for "Marlboro" would have yielded many obvious references to the Complainant and its MARLBORO-brand products. The Respondent's intentional registration of domain names incorporating the Complainant's well-known mark, being fully aware of the Complainant's rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
The Respondent's argument that the Complainant does not have rights in the MARLBORO trademark for use with marijuana, as distinguished from tobacco products, is misplaced. The Complainant has established that it does have trademark rights in the MARLBORO mark for use with tobacco products. The relevant question is whether the disputed domain names are so similar to the Complainant's mark, in which it has rights, that they are likely to cause confusion among consumers. In this case they are.
Although the Respondent is passively holding the disputed domain names, passive holding can still constitute bad faith use under the particular circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The disputed domain names incorporate the Complainant's extensively used and well-known MARLBORO trademark in its entirety and the Respondent must have been aware that Internet users would be led to believe that the disputed domain names and any resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206. It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as passing off or infringing upon the Complainant's trademark rights. See Telstra, supra.
The added terms in the disputed domain names do not impact the overall impression of association with the Complainant's mark. Indeed, the Complainant uses its MARLBORO trademark with cigarette products and the addition of the term "cigarette(s)" only increases the likelihood of consumer confusion. Further, the disputed domain names combine the MARLBORO trademark with the term "weed", a synonym for "marijuana". Marijuana is unlawful under US federal law and under the law of some states. In an analogous case involving the MARLBORO trademark, another WIPO panel held that multiple domain names combining "Marlboro" with terms synonymous with marijuana, "weed" and "kush", were registered and used in bad faith. Philip Morris USA Inc. v. Andrew Soto,WIPO Case No. D2016-0247. The Respondent has conflated the Complainant's trademark with unlawful smoking materials. See id. By combining the MARLBORO mark with the term "weed", the Respondent has intentionally tarnished the Complainant's trademark rights, an indication of bad faith.
Moreover, the registration and use of the disputed domain names creates a form of initial interest confusion, which attracts Internet users to the disputed domain names through the use of the MARLBORO trademark. This is further evidence that the disputed domain names are being used in bad faith. See, e.g., Osuuspankkikeskus OSK v. R, WIPO Case No. D2006-0461.
The Panel finds that given the totality of the circumstances in this case, the Respondent is using the disputed domain names in bad faith. What is more, the Panel finds that the Respondent's attempt to put in place a framework to support a claim that the Respondent has rights or legitimate interests in the disputed domain names because the Complainant does not use its trademark in the cannabis industry to be insufficient to support the Respondent's claims that the Respondent's registration and use has been in good faith. See Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. 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 names be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: June 2, 2017
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