The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden (hereinafter “Complainant”).
The Respondent is Aid Idrizovic of Chicago, Illinois, United States (hereinafter “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2018. On January 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2018, 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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Center received informal email communications from Respondent on February 1, 2018; February 2, 2018; February 7, 2018; February 9, 2018; February 10, 2018; February 12, 2018; February 13, 2018; and March 3, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 13, 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
Complainant is the registrant of trademarks with the United States Patent and Trademark Office for the mark MARLBORO, the earliest of which concerns cigarettes and was issued on April 14, 1908 (No. 68502). Complaint, Annex 1. Previous decisions of Panels have determined the trademark to be famous, and this Panel is in full agreement with those determinations. Complainant is the registrant of the domain name which resolves to a web site which provides information concerning Marlboro tobacco products and other merchandise bearing the MARLBORO mark. Complaint, Annexes 4 and 5.
Respondent registered the disputed domain name on December 5, 2017. Complaint, Annex 2. The disputed domain name resolves to a web site that indicates that the disputed domain name is not presently being used. Complaint, Annex 3. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s fanciful and famous MARLBORO mark preceded by the English word “one”. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s long-standing registered trademark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 2.1.
In the present case Complainant credibly alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Complainant’s trademark is both fanciful and famous, and has been used for more than a century. Respondent could not be unaware of Complainant’s mark. The panel can conceive of almost no use of the disputed domain name that would not infringe Complainant’s mark. Accordingly, 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: March 14, 2018
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