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 WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Irfan Khan of Punjab, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 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 December 8, 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 December 12, 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 December 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on January 10, 2018. 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 states that it is the owner of the Complainant’s trademarks and provides copies of the registration of a number of MARLBORO trademarks with the United States Patent and Trade Mark Office (“USPTO”). The Panel therefore accepts that the Complainant is the owner of a number of trademark registrations within the United States of the trademark MARLBORO the first of which was registered on April 14, 1908. These include the trademark MARLBORO registered at the USPTO with Registration numbers 68,502 (registered April 14, 1908), 3,365,560 (registered January 8, 2008), and 3,419,647 (registered April 29, 2008).
The Complainant is the registrant of the domain name first created on March 6, 2000. This domain name points to the Complainant’s website, “www.”, which enables access to information regarding the Complainant’s MARLBORO products including tobacco products, and is used for commercial purposes including the sale of and offers for such products. The Complainant is also the registrant of the domain name first created on August 15, 1998.
The Disputed Domain Name was registered on November 3, 2017, and resolved to a website prominently displaying the Complainant’s MARLBORO trademark and features text which includes the following: “Congratulations! You have been selected to take part in our short survey to get 2 Free Marlboro Cartons! We only have 332 Cartons remaining so hurry up!” 5. Parties’ Contentions A. Complainant
The Complainant contends that when comparing the Disputed Domain Name to the Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and the Complainant’s trademarks.
The Complainant also contends that (i) the Disputed Domain Name can be considered as capturing, in its entirety, the Complainant’s MARLBORO trademark and simply adding “com” to the end of the trademark, and (ii) this addition to the Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and the Complainant’s trademark, it being well established that the addition of other terms to recognizable trademarks is not sufficient to overcome a finding of confusing similarity pursuant to the Policy paragraph 4(a)(i).
Further, the Complainant submits that the Respondent’s addition of a hyphen does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark, and the use of such hyphen does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark and should be disregarded.
The Complainant points out that the Respondent registered the Disputed Domain Name in November 2017, which is (i) significantly after the Complainant filed for registration of its MARLBORO trademark with the USPTO, and significantly after the Complainant’s first use in commerce of its trademark in 1883, and (ii) significantly after the Complainant’s registration of its domain name on March 6, 2000.
The Complainant states that the granting of registrations by the USPTO to the Complainant for the MARLBORO trademark is prima facie evidence of the validity of the term “MARLBORO” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the MARLBORO trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way, and that the Complainant has not given the Respondent permission to use the Complainant’s trademark in any manner, including in domain names.
The Complainant asserts that the Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests, and that the pertinent WhoIs information identifies the Registrant as “irfan khan,” which does not resemble the Disputed Domain Name in any manner. The Complainant concludes from this that where there is no evidence, including from the WhoIs record for the Disputed Domain Name, that suggests the Respondent is commonly known by the Disputed Domain Name, the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of the Policy paragraph 4(c)(ii).
The Complainant asserts that the Respondent uses the Disputed Domain Name’s website to fool unsuspecting visitors into divulging their personal information by asking them to answer a short survey to get free Marlboro cartons, so that the website at which the Respondent’s Domain Name resolves seeks to take advantage of the fame of the Complainant’s trademarks and the trust and goodwill that the Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to the Respondent’s website for personal gain, and at worst, ‘phish’ personal information from the Complainant’s customers (in the event that the Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). The Complainant submits that this use of the Disputed Domain Name, presumably for commercial gain, clearly fails to constitute a bona fide offering of goods or services pursuant to the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to the Policy, paragraph 4(c)(iii).
The Complainant alleges that by registering a domain name that includes the Complainant’s famous MARLBORO trademark in its entirety in combination with a hyphen and the term “com”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, and as such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant argues further, that the Respondent has included the Complainant’s MARLBORO trademark in its website.
The Complainant concludes that in light of the facts set forth, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered, and that the trademark MARLBORO is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith, and that where a domain name is “so obviously connected with such a well-known name and products...its very use by someone with no connection with the products suggests opportunistic bad faith.”
The Complainant contends that (i) at the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that registration of a domain name containing this well-known trademark constitutes bad faith per se, and (ii) in addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Disputed Domain Name, the Complainant has marketed and sold goods using the MARLBORO trademark since 1883, which demonstrates the Complainant’s fame. The Complainant argues further, that while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain name in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as in this case.
The Complainant also contends that the Respondent has registered and used the Disputed Domain Name for purposes of collecting personal information from Internet users who come across the domain name’s website, which is clear evidence of bad faith registration and use. The Complainant asserts that after first creating a strong likelihood of confusion by misappropriating the Complainant’s trademarks in the Disputed Domain Name, the Respondent has designed a website which requests users to answer a short survey to get 7 free Marlboro cartons. According to the Complainant, the Respondent’s efforts to solicit sensitive, personal information from unsuspecting people certainly constitute fraud, which must be considered bad faith registration and use of the Disputed Domain Name.
The Complainant argues that previous UDRP panels have concluded that evidence of prior Panel decisions in which domain names have been transferred away from the Respondent to complaining parties supports a finding that the Respondent has engaged in a bad faith pattern of “cybersquatting”, and the Respondent in this case has previously been involved in the NAF case PHILIP MORRIS USA INC. v. irfan khan, NAF Claim No. 1754456, which allegedly provides evidence of the pattern of cybersquatting in which the Respondent is engaging.
In addition to the Disputed Domain Name, the Complainant claims that the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, and that this fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Name. The Complainant cites in this regard, Armstrong Holdings, Inc. v. JAZ Associates,NAF Claim No. FA 0095234. The Complainant provides a list of four decisions that allegedly represent further examples of cybersquatting and/or typosquatting by the Respondent, allegedly establishing a pattern of such conduct and bad faith registration and use.
It is also noted by the Complainant that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past panels have held can support an inference of bad faith registration and use.
The Complainant argues that, on balance, the factors set forth in the Complaint, indicate it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In view of the evidence provided by the Complainant, the Panel finds as a fact that the Complainant uses its MARLBORO trademarks in connection with several variations of Marlboro-brand cigarette products.
In the absence of any contrary evidence or response from the Respondent, the Panel also finds that the Complainant has spent substantial time, effort, and money advertising and promoting these MARLBORO trademarks, and the Complainant has developed substantial goodwill in the MARLBORO trademarks.
The dominant feature of the Disputed Domain Name is the word “marlboro” which is the same as the Complainant’s MARLBORO trademark. The addition of the term “com” separated by a hyphen, does not diminish the conclusion that the first impression of an Internet user would be that the Disputed Domain Name is confusingly similar to the Complainant’s MARLBORO trademark because it is a relatively minor addition to the Complainant’s MARLBORO trademark. The use of the generic Top-Level Domain (“gTLD”) “.life” also does not detract from this conclusion since the use of the gTLD in this context does not distinguish the Disputed Domain Name from the Complainant’s MARLBORO trademark. There are no other factors, including anything on the website to which the Disputed Domain Name resolves, that would cast doubt on that conclusion. Further, the Respondent has not responded to the Complainant’s contentions with any rebuttal or evidence to suggest the contrary.
In view of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MARLBORO trademark in which the Complainant has rights. B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name. The evidence provided by the Complainant indicates that:
(i) the Respondent is not sponsored by or affiliated with the Complainant the holder of the MARLBORO trademark,
(ii) the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner,
(iii) the Respondent is not commonly known by the Disputed Domain Name,
(iv) the relevant WhoIs information identifies the Registrant as “WhoisGuard Protected, WhoisGuard, Inc / Irfan Khan” which does not resemble the Disputed Domain Name in any manner, and
(v) there is no evidence, including in the WhoIs record for the Disputed Domain Name, that suggests the Respondent is commonly known by the Disputed Domain Name.
As has been found by previous panels, the Complainant’s MARLBORO trademark that makes up the dominant part of the Disputed Domain Name, is well known internationally including in the Punjab region of the Indian subcontinent where the Respondent gives its address (see, for example, 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, and Philip Morris USA Inc. v. PrivacyP / Nicola Pieropan,WIPO Case No. D2011-1735). In the absence of any submission from the Respondent, it can be concluded that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark. As the Complainant’s trademark is well known internationally, the use of the Complainant’s trademark in the Disputed Domain name would likely also have the effect of increasing traffic to the Respondent’s website to which the Disputed Domain Name resolves. The use of the Complainant’s MARLBORO trademarks in the Disputed Domain Name to increase traffic to the website to which the Disputed Domain Name devolves, likely for the Respondent’s commercial gain, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, it would amount to an illegitimate and unfair use of the Disputed Domain Name.
The website to which the Disputed Domain Name resolves, requests that Internet users disclose their personal information by asking them to answer a short survey in order to obtain two free cartons of Marlboro cigarettes. This use of the Complainant’s trademark is an illegitimate use as it misleads Internet users to believe that they are providing their private information to the Complainant, when in fact they are providing the information to the Respondent. By doing so, the website to which Disputed Domain Name resolves, seeks to take advantage of the Complainant’s trademarks and indirectly to take advantage of the Complainant’s fame and reputation, in order to mislead the Internet user into disclosing private sensitive information to the Respondent. The Internet user is misled into believing s/he is providing sensitive private information to the Complainant when in fact s/he is providing such information to the Respondent. The Respondent could then use any sensitive information provided for its own commercial gain and perhaps also for fraud or other illegitimate objective. Such conduct is an illegitimate use of the Disputed Domain Name and indicates that the Respondent has no rights in respect of the Disputed Domain Name.
In the absence of any submission from the Respondent, and after taking into account all of the matters mentioned above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
It has already been noted that the website to which the Disputed Domain Name resolves, requests Internet users to disclose their personal information by asking them to answer a short survey in order to obtain two free cartons of Marlboro cigarettes. Such conduct amounts to phishing of private sensitive information. If done in circumstances such as the present, where the Internet user is deliberately misled into providing such information to the Respondent when the Internet user believes s/he is providing it to the Complainant, such conduct is illegal in many jurisdictions. It also amounts to the Respondent trading-off the goodwill attached to the Complainant’s trademark incorporated into the Disputed Domain Name for the Respondent’s commercial gain. It might also allow unauthorized account access hacking with potentially serious loss in value of the goodwill attached to the Complainant’s trademarks. The registration and use of the Disputed Domain Name for such purposes is clearly bad faith.
Further, the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name devolves. The Respondent is doing so by creating a likelihood of confusion with the Complainant’s MARLBORO trademark, which may confuse Internet users into believing that the Complainant has endorsed the website and also endorsed the collection of sensitive private information about the user through the website, when clearly that it not the case. The Policy, paragraph 4(b)(iv) provides that such conduct constitutes evidence of bad faith.
In view of the above, and in the absence of any submission from the Respondent, the Panel finds that the disputed 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.
Frank Schoneveld
Sole Panelist
Date: January 29, 2018
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