The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter Kaye Scholer LLP, United States of America.
The Respondent is Metin Apaydin, Istanbul Turkey / Oneandone Private Registration / 1&1 Internet Inc of Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 2, 2017.
The Center verified that 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 of the Complaint, and the proceedings commenced on May 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2017.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on June 2, 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 large US/multinational company, active in the field of tobacco/cigarettes. Its trademark MARLBORO is a well-known mark, in the sense of Art. 6bis of the Paris Convention.
The disputed domain name was registered on December 17, 2016. The website to which the disputed domain name resolves is inactive.
The Complainant is the owner of numerous trademark registrations worldwide for “MARLBORO”, among which are US Reg. Nos. 68,502 “MARLBORO” (from 1908) and 938,510 “MARLBORO” and Red Roof design (from 1972).
Further, the Complainant owns the domain name since the year 2000. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in the word MARLBORO.
The mere fact that the Respondent has added to the mark MARLBORO the geographical term “Kurdistan” with a hyphen and the Top Level Domain Name “.org” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd.,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademark MARLBORO. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a UDRP panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute:
The Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights:
In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue:
Again, in this case there is no such indication from the record.
Further the Respondent does not seem to have any trademark registrations including the term “marlboro”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
Not all facts mentioned by the Complainant fall within the examples of bad faith set out in the above paragraphs. However, according to paragraph 4(b) of the Policy the circumstances mentioned are “without limitation”.
According to the uncontested allegations of the Complainant, the Respondent registered the disputed domain name in bad faith, as it was aware of the long prior existence of the Complainant’s mark, in use since 1883 and easily traceable through even a simple Internet/domain name search.
The Respondent also used the disputed domain name in bad faith, as it diverted Internet users from the Complainant’s true website, while it was not making active use of the website at the disputed domain name.
Finally, the default of the Respondent in the present circumstances seems to “reinforce the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915). Also, the use of a private registration service to conceal the Respondent’s identity reinforces the above inference.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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.
Christos A. Theodoulou
Sole Panelist
Date: June 13, 2017
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