The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is Pre-Cruise Ventures of Laconia, New Hampshire, United States, internally represented. 2. The Domain Names and Registrars
The disputed domain names , , , and ("The Disputed Domain Names") are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 12, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 25, 2017. The Respondent sent three submissions to the Center on April 24, 2017 and April 25, 2017. In response to these submissions, the Complainant filed an additional submission on April 25, 2017.
The Center verified that the Complaint together with the amended Complaint and the additional submission 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Response was filed with the Center on May 1, 2017. . On May 2, 2017, the Respondent sent an email communication to the Center in order to confirm that the Response sent on May 1, 2017 was its definitive Response.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on May 10, 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 the registered owner of the trademark MARLBORO, which is well-known for its tobacco and smoking-related products. Cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of this brand beginning in 1955.
Complainant is the owner of, inter alia, two registered trademarks. The trademark MARLBORO was registered on April 14, 1908 (Registration No. 68,502) and MARLBORO (and Red Roof design), which was registered on July 25, 1972 (Registration No. 938,510). Both trademarks are registered on the Principal Register of the United States Patent and Trademark Office ("USPTO").
Complainant registered and uses the domain name .
Respondent registered the Disputed Domain Names , , , and . Until now the Respondent did not use the Disputed Domain Names. The Disputed Domain Name resolves to an error message reading "Oops!!! This site is currently unavailable"; the other Disputed Domain Names point out to a parking website showing the sentence "Website coming soon".
Besides being a well-known brand name, Marlboro is also the name for a township and a city in America respectively, for example in New Jersey and in Vermont. 5. Parties' Contentions A. Complainant
The Complainant alleges that:
a) The Disputed Domain Names are identical or confusingly similar to the Complainant's mark because:
i) The Disputed Domain Names incorporate the Complainant's MARLBORO mark in its entirety. In this regard, UDRP panels have held that a domain name is confusingly similar to a trademark where, as here, the domain name incorporates the mark in its entirety. See Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger,WIPO Case No. D2011-1675; and Philip Morris USA Inc. v. PrivacyP / Pieropan,WIPO Case No. D2011-1735..
ii) The mere addition of the generic words "photographers", "cowboy", "images", "real" and "original" in the Disputed Domain Names does not distinguish the Disputed Domain Names from the Complainant's MARLBORO Trademarks.
iii) Through the widespread use of the MARLBORO Trademark, the word "marlboro" has become distinctive and uniquely associated with the Complainant and its products. UDRP 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 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide"); Philip Morris USA Inc. v. PrivacyP / Paundrayana W,WIPO Case No. D2012-0660 ("Respondent creates a likelihood of confusion with the Complainant's famous trademark and deprives the Complainant from offering its products to prospective clients"); Philip Morris USA Inc. v. PrivacyP / Pieropan, supra ("finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels"); and Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (recognizing the fame of the MARLBORO Trademarks).
iv) The Respondent's registration of the Disputed Domain Names and deliberately evokes the Complainant's "Marlboro Man" cowboy and its Western theme marketing campaign. For over half a century the Complainant has made extensive use of a specific Western theme in connection with its MARLBORO-branded cigarettes, including images of a cowboy set against Western landscapes. The use of the "Marlboro Country" Trade Dress has enhanced its ability to protect its rights in its cowboy on horseback image and in related images, and even the word "cowboy" against infringing use.
United States courts have twice acknowledged the Complainant's exclusive rights in its particular American West theme for tobacco products, in Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 1995) and Philip Morris USA, Inc. v. Cowboy Cigarette, Inc., 70 U.S.P.Q.2d 1092 (S.D.N.Y. 2003).
b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Names because:
i) 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" and the Respondent has not received any license, authorization, or consent — express or implied — to use the MARLBORO Trademarks in a domain name or in any other manner, either at the time when the Respondent registered and began using the Disputed Domain Names, or at any other time since. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent or commercial gain, as those name points merely to an inactive website showing a message stating "Website coming soon!".
ii) The Respondent has no concrete plans for the Disputed Domain Names, much less established websites associated with those names, whether relating to Marlboro, New Jersey, its vicinity, or elsewhere. As UDRP panels made clear, the mere intention without more, does not establish legitimate rights or interests in any domain names including "marlboro". See Philip Morris USA Inc. v. Brian Roberts,WIPO Case No. D2014‑1867; Antigua Group. v. Vanilla, Ltd.,WIPO Case No. D2004−0543 (where the respondent was "unable to produce any evidence of […] any preparations towards [its stated business purpose]" it failed to establish its rights or legitimate interests in the domain name.).
iii) The Respondent used the Disputed Domain Names to divert Internet users from the Complainant's website by capitalizing on the public recognition of the MARLBORO Trademarks. As the 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 illegitimate users such as Respondent could have no legitimate interest in the trademark. A previous UDRP panel commented 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.
iv) The fact, that a few locations are called Marlboro is irrelevant, because of the famous brand name that the Complainant had used for more than a century.
c) The Respondent has registered and is using the Disputed Domain Names in bad faith because:
i) The Respondent had the fully knowledge of the Complainant's rights in the MARLBORO Trademarks. Panel decisions involving the Complainant's MARLBORO Trademarks reflect this reasoning in finding bad faith. See, e.g., Philip Morris USA Inc. v. Jose Vicente Gomar lacer and Gandiyork SL, WIPO Case D2014−2264 ("Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant's MARLBORO Trademarks significantly pre-date Respondents' registration of the Domain Name and in light of the long-established and widespread use and the protection of the MARLBORO Trademarks that Respondents knew or ought to have known of Complainant's prior rights."); Philip Morris USA Inc. v. ADN HOSTING,WIPO Case No. D2007-1609 (finding that it was "inconceivable" that the respondent "was not aware of the MARLBORO trademarks").
ii) The fact that Respondent holds not one but five domain names incorporating the MARLBORO mark further manifests Respondent's bad faith. See, e.g., TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc.,WIPO Case No. D2012-2533 (June 9, 2013).
iii) None of the four other Disputed Domain Names, other than connote a photography studio. The public is likely to associate the Disputed Domain Names and with MARLBORO advertisement circulated on or behalf of the Complainant.
iv) The Respondent's using the exact MARLBORO Trademarks to divert Internet users from the Complainant's true website demonstrates bad faith use under the Policy. See, e.g., Popular Enters., LLC v. Am. Consumers First et al.,WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect website users away from a complainant's website is evidence of bad faith).
v) The Infringing Domain Names currently resolve to an inactive websites. This also reveals bad faith use.
vi) Previous UDRP panels, including those ordering transfer of domain names to the complainant, state that the few factors listed in Paragraph 4(b) of the Policy as supporting a finding of bad faith are nonexclusive; this provision expressly states that the circumstances underlying a finding of bad faith use and registration identified in Paragraph 4(b) are "without limitation". See, e.g., Philip Morris USA Inc. v. Daniel Iannotte,WIPO Case No. D2015-0381 (ordering the transfer to the Complainant of , which pointed to inactive site, and stating "Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent.").
vii) The copyright lawsuit filed against a third party photographer about unauthorized copying of photographs, claimed by the Respondent in one of its submissions and which will be referred to below, does not excuse the Respondent in the registration of the Disputed Domain Names. Copyright issues are irrelevant to trademark issues, because different property interests are protected.
viii) The Complainant does not fail to protect its trademarks or other proprietary rights. Indeed, the Complainant has prevailed in hundreds of domain name disputes pursuant to the Policy and the usTLD Dispute Resolution Policy ("usDRP"). B. Respondent
The Respondent alleges, that the Complaint cannot have the universal authority over the word "marlboro" including owning the exclusive rights for the word "marlboro" by having registered the trademark MARLBORO because:
i) Marlboro is also a geographic location which is the name of cities all around the county. The Respondent intends to incorporate in the city of Marlboro in New Jersey with a business based on photography, which is the reason for the Disputed Domain Name being .
ii) The Complainant acts in the same way, the Respondent does here, regarding the similarity of registered domain names. It is about "Marlboro Music which is a similar combination of words to the ones disputed here. The Complainant only owns the domain , whereas the domain names and are not owned by the Complainant but by the Marlboro Music School & Festival of Marlboro, which is a music festival in Marlboro, Vermont.
By registering the domain name , the Complainant used a domain name, which is as similar to the domain name used by the music festival in Vermont as the Disputed Domain names used by the Respondent now. If the domain name is –according to the Complainant − not a violation of the registered domain names and , then the Disputed Domain Names cannot be violating the domain names registered by the Complainant.
iii) The Complainant tried to trademark the combination of words "Marlboro Music", but failed and abandoned its efforts before the 6-year deadline.
iv) A third party photographer copied unauthorized some of the cowboy photographs that the Complainant used in its "Marlboro Country" advertising campaign and was therefore brought to court by the Complainant in a copyright suit and said third party photographer won the lawsuit. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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 is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant's mark.
The Disputed Domain Names , , , and contain sufficient similarities to the Complainant's Trademark MARLBORO. The Complainant's trademark is incorporated in its fully in the Disputed Domain Names. The Respondent just added dictionary terms, such as "cowboy", "images", "photos", "photographers" or "real", to the MARLBORO mark in the Disputed Domain Names, which do not avoid their confusing similarity. B. Rights or Legitimate Interests
It is undisputed that the Respondent has not been authorized by the Complainant to use its MARLBORO mark in a domain name or otherwise.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Although a Complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company,WIPO Case No. D2010-1762.
Accordingly, the Complainant needs first to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. "Upon such a showing, the burden [of production] shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names." See Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult,WIPO Case No. D2014-1819.
In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a)(iii) of the Policy.
This finding is inter alia based on the following, non-disputed, circumstances:
1) The Respondent has never registered any trademark in any form and is not commonly known by the Disputed Domain Names;
2) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark;
3) The Respondent's use of the Disputed Domain Names is not in a bona fide offering of goods or services, and does not constitute any legitimate noncommercial or fair use.
This Panel does not accept the Respondent's contentions because the Respondent failed to prove that he uses or plans to use the Disputed Domain Names for a business or any other legitimate purpose. The Disputed Domain Names have not been used so far nor are preparations for using the domain name proven. For claiming the use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, the respondent has to support his contention by relevant pre-complaint evidence. Here the Respondent failed to do so, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.2.
As the Respondent failed to provide sufficient evidence to support its contention, the Panel finds that the second element of paragraph 4(a) of the Policy has been established regarding the Disputed Domain Names.
Even if the trademark MARLBORO deals with cigarettes, smoking-related products and many other products, e.g. cars, candy etc., and not necessarily with e.g. the specialized business of photography per se, by using the Disputed Domain Names the word MARLBORO interferes with the trademark. This is enough to affect the Complainants rights. C. Registered and Used in Bad Faith
Regarding the Disputed Domain Names, the Panel concludes that the requirements of paragraph 4(a)(iv) of the Policy have been sufficiently made out by the Complainant and that the Respondent's bad faith registration and use of the Disputed Domain Name have been proven.
Paragraph 4(b) of the Policy provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a domain name:
"i) Circumstances indicating that you [respondent] have registered or you [respondent] have acquired the 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 trade mark or service mark, or to a competitors of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii) You [respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii) You [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitors; or
iv) By using the domain name, you [respondent] 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 web site or location or of a product or service on your website or your location."
The Panel finds that at the minimum the circumstance set out in paragraph 4(b)(iv) is fulfilled here. In the Panel's view there is sufficient evidence that leads to the finding that the Respondent acquired the Disputed Domain Names primarily for the purpose of attracting Internet users to the Respondent's website or other online locations, by creating a likelihood of confusion with the Complainant's Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or services on said websites. Although no immediate commercial gain is obtained through this confusion, the Respondent's purpose for the website appears to gain the trust of the Internet user into believing the website belongs to the Complainant.
The Disputed Domain Names and in addition include not only the geographical location combined with the business, which is supposed to be launched, but also the terms "real" or "original". The meanings of those words indicate that the person or product behind the Disputed Domain Name is the first or earliest or the person / product existing from the beginning. The product which is existing from the beginning is not the to be launched business of the Respondent. In fact the trademark MARLBORO exists much longer and is therefore more likely to be seen as "original" and "real". Hence Internet users are likely to refer the domain name to the well-known products of the trademark MARLBORO which likely leads to confusion of the domain name with the Complainant's mark.
Moreover, the Respondent indeed registered the Disputed Domain Names without even having a business which could use one of them. This indicates the use in bad faith. By referring to cowboy images in connection with the word "Marlboro" consumers automatically think of the trademark MARLBORO. Neither the still to be launched business of the Respondent nor the city of Marlboro in New Jersey have any connection to the word cowboy. The Disputed Domain Names and do not connote a photography studio. Therefore the public is likely to associate these Disputed Domain Names with MARLBORO advertisement circulated by or of the Complainant.
The fact that the Respondent registered five Disputed Domain Names shows a pattern; see WIPO Overview 3.0, section 3.1.2.
As the Respondent states that a third party photographer, who copied unauthorizedly cowboy photographs which were used in advertisements by the Complainant, won a copyright lawsuit against the Complainant regarding the copyright with those images, it has to be clarified, that copyright and trademark issues cannot be equated. While trademarks identify products or services of a particular source from those of others, copyright grants the creator of an original work exclusive rights for its use and distribution. Therefore, two different property interests are protected which makes the won copyright lawsuit of a third party photographer irrelevant for the purpose of this Complaint.
The fact, that the Complainant uses a domain name which is similar to a domain name of a Music festival in Vermont cannot result in a different conclusion. Even though the domain names only vary within their ending , , , this cannot give the Respondent the right to use a confusingly similar domain name in bad faith. The logic of Respondent's argument does not follow. 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, , , , and are transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: June 8, 2017
Full & Egal Universal Law Academy