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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 23, 2018 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 July 27, 2018.
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 July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 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 is United States tobacco company based in Virginia, owner of numerous trademark registrations within the United States, designating products in class 34, in particular:
- MARLBORO, United States trademark registration n°0068502, registered on April 14, 1908, latest renewed on April 14, 2018;
- MARLBORO, United States trademark registration n°3365560, registered on January 8, 2008; and
- MARLBORO, United States trademark registration n°3419647, registered on April 29, 2008.
The Complainant has marketed and sold goods in relation to cigarettes using the MARLBORO trademarks since 1883.
The Complainant also owns the following domain names:
- , created on March 6, 2000, resolving to the Complainant’s website on which Internet users have access to information regarding the Complainant, its products under the MARLBORO trademarks and special offers to age-verified adult smokers;
- , created on August 15, 1998.
The Respondent registered the disputed domain name using a privacy service. The underlying registrant appears to be based in Panama and registered the disputed domain name on March 29, 2018.
The disputed domain name used to redirect to a website featuring pay-per-click (“PPC”) links to third-party websites and listing the disputed domain name for sale. The disputed domain name is now inactive. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the disputed domain name is confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces the MARLBORO trademark in its entirety, and the additional term cannot prevent the finding of confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant submits that the Respondent is not commonly known by the disputed domain name.
The Complainant further contends that the Respondent uses the disputed domain name to redirect Internet users to a website using PPC links. The Complainant also contends that the disputed domain name is being offered for sale by the Respondent, which serves as further evidence of lack of rights or legitimate interests.
(iii) The Complainant contends that the disputed domain name was registered and is being used in bad faith, and that the Respondent knew or should have known the existence of the Complainant’s rights.
The Complainant contends that the presence of multiple PPC links and the offer to sell the disputed domain name on the website to which the disputed domain name resloves, establishes the Respondent’s bad faith to take undue profit by creating a likelihood of confusion with the Complainant’s trademarks.
Moreover, the use of a privacy proxy service by the Respondent to hide its true identity is another factor indicating bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s case meets the requirements of paragraph 4(a) of the Policy.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below. 6.2 Substantive Matters A. Identical or Confusingly Similar
The Complainant has provided evidence that it has rights in the MARLBORO trademarks, which have been registered in the United States, well before the Respondent registered the disputed domain name.
This satisfies the Panel that the Complainant has registered trademark rights in the MARLBORO trademarks for the purposes of the Policy.
In comparing the disputed domain name with the trademarks of the Complainant, the Panel finds that the trademarks MARLBORO are replicated entirely in the disputed domain name, the latter simply containing the addition of the term “pointswest” and the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a gTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
The last element at issue is the additional term “pointswest”.
The Complainant contends that the addition of such term to recognizable trademarks is not sufficient to overcome a finding of confusing similarity.
According to WIPO Overview 3.0, section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
UDRP panels have consistently held that the addition of a descriptive term to a disputed domain name that incorporates a trademark in its entirety typically does not prevent the finding of confusing similarity. See Philip Morris USA Inc. v. Ma Jia Huan,WIPO Case No. D2018-1291, ; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, ; LEGO Juris A/S v. DBA David Inc/ DomainsByP,WIPO Case No. D2011-1290, .
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The requirement of paragraph 4(a)(i) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no license or authorization granted by the Complainant.
The Complainant provided evidence that the Respondent use a privacy proxy service to hide its true identity, so that there is no evidence to suggest that the Respondent is commonly known in relation to the MARLBORO trademarks.
Further, the Complainant provided evidence that the disputed domain name was being used to display PPC advertising links and offer the disputed domain name for sale at an amount exceeding the Respondent’s outof-pocket expenses in the registration.
Moreover, the PPC links on the Respondent’s website were redirected to websites in relation to cigarettes that directly reference the Complainant and third parties that are competitors of the Complainant.
According to WIPO Overview 3.0, section 2.9, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
UDRP panels have notably held that the use of a disputed domain name is not for a bona fide offering of any products or services, where the disputed domain name is offered for sale for an amount which appears to be for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the disputed domain name. Such would appear to be the case here, where the disputed domain name is offered for a minimum price of USD 500. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; Kabushiki Kaisha ASICS v. SC Gaticonstruct,WIPO Case No. DRO2008-0010.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. By not submitting a Response, the Respondent offered no information on what rights or legitimate interests it may have in the disputed domain name. Thus, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant submitted evidence that its trademarks MARLBORO are well known in the United States and worldwide. Previous UDPR panels have also recognized the well-known character of its trademarks. See 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; Philip Morris USA Inc. v. PrivacyP / Nicola Pieropan,WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd.,WIPO Case No. D2009-1263.
It has been proven to the Panel’s satisfaction that the Complainant’s trademarks are well known internationally. The Panel accepts that the Respondent could not reasonably claim to be ignorant of the Complainant’s activities.
Further, the Complainant provided evidence that the disputed domain was being used to feature multiple PPC links to third party websites and websites referencing the Complainant, in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain.
In the absence of a Response from the Respondent, the Respondent offered no information on the intention of such uses. The Panel therefore finds that the PPC advertising could be considered as indication of bad faith use, see section 3.5 of WIPO Overview 3.0.
Moreover, the offer to sell the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs is another evidence of bad faith use. Previous UDRP panels have found bad faith where the use is simply offering for sale a confusingly similar domain name incorporating a third party’s trademark or for an excessive consideration. See Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited,WIPO Case No. D2014-1935.
Accordingly, this Panel finds that the intention of the Respondent to take undue advantage of the Complainant’s trademarks has been demonstrated.
Finally, the Panel accepts that further evidence of bad faith is that the Respondent is using a privacy service to hide its identity, see WIPO Overview 3.0, section 3.6.
For the above reasons, the Panel finds the Respondent registered and is using the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Isabelle Leroux
Sole Panelist
Date: September 24, 2018
Full & Egal Universal Law Academy