The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Steve David, Steve LLC of Kuwait. 2. The Domain Name and Registrar
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 June 8, 2018. On June 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2018, 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.
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 the Respondent of the Complaint, and the proceedings commenced on June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2018.
The Center appointed C. K. Kwong as the sole panelist in this matter on July 17, 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 is the owner of numerous trademarks consisting of or comprising the word MARLBORO. These registrations include the following United States Trademark Registrations:
(a) Registration No. 68,502 for the mark MARLBORO in respect of cigarettes under Class 34 (US Class 17) with first use claimed from 1883 and registered as of April 14, 1908;
(b) Registration No. 3365560 for the mark MARLBORO in respect of certain tobacco products under Class 34 with first use claimed from August 6, 2007 and registered as of January 8, 2008;
(c) Registration No. 3,419,647 for the mark MARLBORO in respect of certain tobacco products under Class 34 with first use claimed from August 6, 2007 and registered as of April 29, 2008.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid MARLBORO mark occurred many years before the registration of the disputed domain name on November 23, 2017.
Other than the particulars shown on the printout of the database search conducted by the Complainant in the WhoIs Database (Annex 2 to the Complaint), there is no other evidence in the case file concerning the background of the Respondent and its business. The disputed domain name resolves to a website with
pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant has made the following contentions:
1. The MARLBORO trademark is distinctive and uniquely associated with the Complainant and its products.
2. The MARLBORO trademark is well known worldwide.
3. The Complainant has registered domain names bodying the word MARLBORO, including the domain name which resolves to a website providing access to information regarding the Complainant, its products and offers.
4. The disputed domain name has incorporated, in its entirety, the Complainant’s MARLBORO trademark.
5. The adding of the suffix “packs” and the generic Top-Level Domain (“gTLD”) “.life” do not distinguish the disputed domain name from the Complainant’s trademark MARLBORO.
6. To the contrary, the term “packs” increased the confusion because the Complainant’s cigarettes are sold in packs.
7. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or authorized the Respondent to use the trademark MARLBORO for registration of any domain name or in any manner. The Respondent is not sponsored by or affiliated with the Complainant in any way.
8. The disputed domain name resolves to a website where unsuspecting visitors are invited to provide their personal information by answering a short survey in return for a USD 41 voucher. It takes advantage of 9. The fame of the Complainant’s trademark and goodwill to attract increased traffic to the said website for commercial gain. It does not constitute a bona fide offering of goods or services by the Respondent.
The disputed domain name is registered well after the Complainant’s registration of the trademark MARLBORO in 1883 and the domain name on March 6, 2000.
10. It is not possible to conceive a possible situation in which the Respondent would have been unaware of the Complainant’s mark at the time when the disputed domain name was registered.
11. The fact that the Respondent incorporated the entire trademark MARLBORO and combined it with the term “packs” which associates with the form of the Complainant’s sale of cigarette packs demonstrate knowledge and familiarity with the Complainant’s well-known brand and business. There supports the establishment of constructive or actual notice and knowledge of the Complainant’s trademark at the time of registration and use.
12. The disputed domain name was registered and used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Notice of Proceedings
The contact particulars of the Respondent and the details of disputed domain name were fully set out in the publicly available WhoIs search results provided in Annex 2 to the Complaint. Such contact details also match those provided by the Registrar to the Center on June 8, 2018.
On June 14, 2018, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding and the Written Notice to the Respondent in accordance with the contact details above by email and courier.
The Panel finds that the Complainant and the Center have duly communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communication have been discharged and the Respondent is bound accordingly.
The Panel is satisfied that the failure of the Respondent to furnish a Response is not due to any omission or inadequate communication by the Center. 6.2 The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that “[the] 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 14(b) of the Rules further provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See the Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. A. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark MARLBORO by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MARLBORO.
The disputed domain name embodies the Complainant’s trademark in its entirety. The mere addition of the suffix “packs” immediately after the Complainant’s word mark MARLBORO does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark.
It is also well established practice to disregard the gTLD part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
After removing the said suffix “packs” from the main part of the disputed domain name and the gTLD “.life”, only the word MARLBORO is left in its entirety. The disputed domain name and the Complainant’s trademark are confusingly similar.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark MARLBORO well before the Respondent’s registration of the disputed domain name on November 23, 2017. The Complainant has confirmed that it is not affiliated with the Respondent and has not licensed the Respondent to use its mark.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the term “marlboro” in its domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as “”.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the Complainant’s supported claim of registration of its said MARLBORO trademark and the extensive use of that mark for many years long before the registration of the disputed domain name in 2017, there is a strong case for the Respondent to come forward to defend itself. Despite that, the Respondent has not come forward with any defence on its choice of embodying the trademark MARLBORO in its entirety as part of the disputed domain name .
The choice of the well-known trademark MARLBORO in its entirety as part of the disputed domain name with the addition of the suffix “packs” aforesaid without any explanation, the prior registration and extensive worldwide use of the Complainant’s mark (including use on the Internet) leads to the conclusion that the Respondent must be aware of the existence of the Complainant and its trademark MARLBORO at the time of the registration of the disputed domain name.
The printout of the website to which the disputed domain name solves as shown in Annex 3 to the Complaint shows an invitation to survey in return for a USD41 voucher from a wholesaler to the participants, which is apparently a commercial operation for commercial gain. Internet users are attracted by the disputed domain name to click through the said website. Being the registrant of the disputed domain name, the Respondent has used or allowed others to use the disputed domain name for operating the said website to which it resolves.
The Panel cannot conceive of any use by the Respondent of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use by the Respondent of the disputed domain name. The use of the term “Marlboro” in the disputed domain name is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the websites or online locations where the disputed domain name leads to. It is not possible to think of any plausible and genuine use of the disputed domain name by the Respondent. The addition of the word “packs” which associates with the manner in which the Complainant’s goods are sold, being cigarettes sold in packs, adds to the confusion.
The Panel finds that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. 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.
C. K. Kwong
Sole Panelist
Date: July 31, 2018
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