Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter Kaye Scholer LLP, United States of America.
Respondent is Sarah Giustra / Seal Pup Designs of Hollywood, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “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 April 7, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 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 April 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2017. Apart from the emails received from Respondent of April 21, May 3 and May 7, 2017 no formal Response was filed with the Center.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 17, 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.
Supplemental filings were received from Complainant on May 1 and May 4, 2017. Supplemental filings were received from Respondent on May 3 and May 7, 2017. The Center acknowledged receipt of the supplemental submissions, and the Panel, in its discretion, has considered these supplemental filings. 4. Factual Background
Complainant is a manufacturer of cigarettes, and has sold its products under the registered trademark MARLBORO for more than a century. The MARLBORO mark is one of the most famous trademarks in the world. 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).
Complainant’s marketing campaigns over the past several decades have also included “Western” or “cowboy” imagery, including the rugged figure in a cowboy hat widely known as the “Marlboro Man.” Many of the “Marlboro Man” advertisements feature the phrase “Come to Marlboro Country.”
The Domain Name was registered on August 16, 2007. According to Respondent, she acquired the Domain Name in 2009. The Domain Name resolves to a parking page which contains click-through links on such topics as “cigarette smoking,” “menthol tobacco,” and “targeted advertising.” In the corner of the web page is the phrase “BUY THIS DOMAIN” with an accompanying hyperlink.
Respondent is a graphic artist who asserts that she bought the Domain Name “after making the acquaintance of a person from Marlboro, New Jersey, USA.” According to Respondent, in 2009 the Marlboro Township Municipal Utilities Authority “was in the process of developing a system to meet nearly 40% of its electricity needs with emissions-free solar-generated power.” Upon learning of this development, Respondent states, she “purchased the domain name, thinking it would be an interesting play on words for a website that this individual was interested in creating to promote the area, with emphasis on this solar energy system which greatly reduced New Jersey CO2 emissions.”
Respondent goes on to say that the website under consideration “never came to fruition,” and that she has “lost touch with the individual who approached [Respondent] about creating this website.” Respondent adds that she decided to retain ownership of the Domain Name “in hopes that it could someday be used to somehow promote Marlboro, New Jersey, and the great strides that it has made to save our environment.” 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
In her series of email submissions to the Center, Respondent denies that she registered the Domain Name in bad faith, and that she has a right to use the Domain Name in connection with the Marlboro, New Jersey area since Complainant does not own a monopoly on the word “Marlboro” in all contexts. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
The Panel concludes that Complainant has rights in the mark MARLBORO, through longstanding registration and widespread use. The Panel further concludes that the Domain Name is confusingly similar to the MARLBORO mark, because the Domain Name incorporates that mark in its entirety and incorporates the words “come to” and “country.” These additional words do little to reduce the confusing similarity between the mark and the Domain Name, particularly in view of Complainant’s “Marlboro Man” and “Come to Marlboro Country” advertising campaigns.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent contends that she bought the Domain Name in 2009 in order to create a website devoted to the environmental initiatives afoot in Marlboro, New Jersey, but she offers absolutely no corroboration for that assertion, by way of an affidavit or any contemporaneous records of demonstrable preparations. The Policy refers to “demonstrable” preparations, not bare assertions, since allowing a claim of legitimate interest under the latter standard would invite no end of baseless pretextual assertions of post hoc motives.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and has used the Domain Name in bad faith within the meaning of the Policy. Respondent does not – and credibly cannot – deny knowledge of the famous MARLBORO trademark at the time she registered the Domain Name. The Panel also finds it likely, on a balance of probabilities under this record, that Respondent was aware of Complainant’s advertising slogan “Come to Marlboro Country” at the time she acquired the Domain Name. She explains that the Domain Name was chosen as “an interesting play on words,” but one strains to understand why this is an interesting play on words other than in reference (or allusion) to Complainant and its famous mark.
Respondent denies that she ever made any money from the hyperlinks on the parking page to which the Domain Name resolves, or that she actually intended to sell the Domain Name. The Panel need not make a finding on the validity of Complainant’s claims that Respondent is in bad faith under the above-quoted Policy paragraphs 4(b)(i) and 4(b)(iv). This is because the Panel finds that Respondent is in bad faith for her “passive holding” of a Domain Name confusingly similar to a famous trademark under the principle first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In that seminal case, the UDRP panel held that bad faith under the Policy may occur, in appropriate circumstances, where a respondent passively holds a domain name confusingly similar to a famous trademark. The two main factual considerations driving the Telstra decision, which are also present here, are that the trademark in question is well-known in the respondent’s country and that the respondent offered no evidence of any legitimate purpose for registering the domain name. The Telstra panel concluded that, in those circumstances (plus some other considerations not present here but not as important), “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
The Panel concludes that the same result is warranted under the record here.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: May 17, 2017
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