The Complainant is Philip Morris USA Inc., of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is 1&1 Internet Limited of Gloucester, Gloucestershire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Mehjabeen Neesa of Basildon, Essex, United Kingdom, self−represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain name”) is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On July 28, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 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 August 3, 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 of the Complaint, and the proceedings commenced on August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. The Response was filed with the Center on September 6, 2017.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 28, 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
Complainant has used the MARLBORO trademark since 1883 and is the owner of a number of trademark registrations within the United States Patent and Trademark Office (“USPTO”), including:
- USPTO Registration No. 68,502 wordmark MARLBORO, registered on April 14, 1908.
- USPTO Registration No. 3,365,560 wordmark MARLBORO, registered on January 8, 2008.
- USPTO Registration No. 3,419,647 wordmark MARLBORO, registered on April 29, 2008.
Hereafter together referred to as the “Trade marks”.
The Complainant registered the Domain name on June 1, 2017. The Domain name connects to a website containing links to, inter alia, tobacco and vaping products. 5. Parties’ Contentions A. Complainant
According to the Complainant, when comparing the Domain name to the Trade marks, the relevant comparison to be made is between the second-level portion of the Domain name and the Trade marks, being the generic Top-Level Domain (“gTLD”), in this case “.com”, irrelevant when establishing whether or not a domain name is identical or confusingly similar to a trade mark, because TLDs are a required element of every domain name.
The Complainant further points out that in the Domain name, the generic, descriptive term “liquids” has been added to the Trade marks, thereby making the Domain name confusingly similar to the Trade marks. The Complainant states that electronic cigarettes, or vape pens, work by using concentrated liquids instead of tobacco, many of which are formulated to mimic the taste of famous cigarette brands. Therefore, the Complainant contends, the inclusion of the Trade marks with the generic term “liquids” in the Domain name is to allude to potential consumers that Respondent has a liquid that tastes like the tobacco cigarette that is sold bearing the Trade marks.
According to the Complainant, the Respondent is not commonly known by the Domain name, is not sponsored by or affiliated with the Complainant in any way, and the Complainant has not given the Respondent permission to use the Trade marks in any manner, including in domain names.
Furthermore, the Complainant contends that the Respondent is using the Domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business, such as websites featuring smoking and tobacco vaping products. Presumably, the Complainant adds, the Respondent receives pay-per-click fees from the linked websites that are listed at the Domain name’s website.
The Complainant points out that the Respondent registered the Domain name on June 1, 2017, which is significantly after the Complainant filed for registration of the Trade marks with the USPTO, and the Complainant’s first use in commerce of its trademark in 1883. Furthermore, the Complainant states, the Trade marks are well-known, and by registering a domain name that includes the Trade marks in their entirety along with the term “liquids”, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant concludes that at the time of registration of the Domain name, the Respondent knew, or at least should have known, of the existence of the Trade marks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition, the Complainant submits that the Respondent creates a likelihood of confusion with the Complainant and the Trade marks by registering a domain name that contains the Trade marks with the generic term “liquids” as a suffix, which according to the Complainant demonstrates that the Respondent is using the Domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain name and the website. Furthermore, the Complainant contends, by creating this likelihood of confusion between the Trade marks and the Domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Trade marks in order to increase traffic to the Domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website.
The Complainant puts forward that, on balance of these facts, the Respondent should be found to have registered and used the Domain name in bad faith. B. Respondent
The Respondent has filed a Response which, with the exception as set out below, is a copy of the sample response provided on the Center’s website, without supporting evidence.
The Respondent submits that “Marlboro Liquids” is a company that has no relation to the Complainant, is not a tobacco or smokeless tobacco company, but has interest in another field of trade which is not relevant to tobacco or electronic smokeless tobacco products. According to the Respondent, the domain page that the host (1&1 Internet) has displayed is generic and was not authorized or requested by the Respondent, which is not currently operating the website. The Respondent states that it has registered the Domain name to represent its trade in a different field to tobacco-related products and not in bad faith to the Complainant or the Trade marks. In addition, the Respondent contends that its brand is not confusingly similar to the Trade marks as it is not operating in the business of tobacco or any smoking or smokeless products. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade marks.
The Domain name is confusingly similar to the Trade marks as it incorporates the marks in their entirety. For the confusing similarity test it is not necessary that the Domain name is used for the same or similar products or services as the Trade marks and, therefore, assuming that the statement in the Response, that the Respondent is not operating in the business of tobacco or any smoking or smokeless products, were correct, this does not take away the confusing similarity. The addition of the generic word “liquids” does not avoid this confusing similarity (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).
Therefore, the Panel finds that the Domain name is confusingly similar to the Trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade marks as part of the Domain name, is not commonly known by the Domain name and has not acquired trade mark rights in the Domain name. The Respondent’s use of the Domain name in the present case for a website containing links to websites where products are offered for sale that compete with the Complainant’s products sold under the Trade marks, does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
The statement of the Respondent that his company has interests in another field of trade, even if the Respondent thereby means the manufacture and/or sale and marketing of products not competing with those of Complainant, is not a sufficient rebuttal to the Complainant’s evidence and assertions in this regard. The Respondent has not given any explanation for its use of the Trade marks as part of the Domain name and has not clarified to which “liquids” the Domain name refers, nor provided any evidence of its prior use of or previous reputation under the name “Marlboro”. The statement in the Response that the web site connecting to the Domain name was not authorized or requested by the Respondent, does not take away the Respondent’s responsibility for such website and its contents. Moreover, it is known that such websites generate pay-per-click income, while the Panel has verified that at the time of this decision the website was still active and connected to the Domain name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain name. C. Registered and Used in Bad Faith
Many panels in previous UDRP decisions have found that the MARLBORO trademark is well-known throughout the world and a famous trade mark (See, for instance, Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013−1306; and Philip Morris USA Inc. v. PrivacyP / Nicola Pieropan,WIPO Case No. D2011-1735).
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain name the Respondent was or should have been aware of the Trade marks, since:
- the Respondent’s registration of the Domain name occurred more than a hundred years after the registration of the earliest of the Trade marks;
- the Trade marks are famous throughout the world;
- the element “marlboro” of which the Trade marks consist, is incorporated in its entirety in the Domain name, and does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of.
Under these circumstances, the Panel concludes that the Domain name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain name resolves to a website which contains links to websites offering competing products, is an indication that the Domain name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain name resolves, and of the services offered there, within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain name has been registered and is being used 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.
Wolter Wefers Bettink
Sole Panelist
Date: October 13, 2017
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