Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is William Gharapetian of Fortuna, California, United States. 2. The Domain Name and Registrar
The disputed domain name (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 October 11, 2018. On October 12, 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 confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. Respondent did not submit any response (but, as stated below, submitted a communication to the Center). Accordingly, the Center notified Respondent’s default on November 6, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 8, 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 states that it is the owner of “numerous trademark registrations within the United States” that consist of or include the mark “MARLBORO” (the “MARLBORO Trademark”), including the following:
- United States Reg. No. 68,502 for MARLBORO, registered April 14, 1908, for use in connection with cigarettes.
- United States Reg. No. 3,365,560 for MARLBORO, registered January 8, 2008, for use in connection with tobacco products.1
- United States Reg. No. 3,419,647 for MARLBORO, registered April 29, 2008, for use in connection with tobacco products.
Complainant further states that numerous “administrative panels already have determined that the MARLBORO® Trademarks are famous,” citing, among other decisions, Philip Morris USA Inc. v. ICS Inc.,WIPO Case No. D2013-1306 (transfer of ), in which the panel said: “As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide.”
The Disputed Domain Name was created on May 20, 2018, and is not being used in connection with an active website. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the MARLBORO Trademark because “[t]he Disputed Domain Name can be considered as capturing, in its entirety, Complainant’s MARLBORO® trademark and simply adding the descriptive term ‘weed’ to the end of the trademark,” which “does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark”, “the addition of other terms to recognizable trademarks is not sufficient to overcome a finding of confusing similarity,” and the “addition of a hyphen does nothing to distinguish the Disputed Domain Name from Complainant’s trademarks.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name” because the WhoIs record identifies Respondent as “William Gharapetian”; and “Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “MARLBORO® is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith”; “[a]t the time of registration of the Disputed Domain Name, Respondent knew, or at least should have known, of the existence of Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se”; “passively holding a domain name can constitute a factor in finding bad faith registration and use”; “[t]he Disputed Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Name”; and “on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark.” B. Respondent
Although Respondent did not reply to Complainant’s contentions, Respondent sent an email to the Center and the Registrar on October 12, 2018, asking whether there “is there a way to just settle and sell my domain name to them?” On October 15, 2018, the Center forwarded this email to Complainant and outlined the process for suspending a UDRP proceeding “to explore settlement options.” On the same date, Complainant responded that it “has no wish to suspend this proceeding” and asked the Center to “continue with this matter.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant,2 it is apparent that Complainant has rights in and to the MARLBORO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the MARLBORO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “marlboro-weed”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is 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 1.11.1.
The Disputed Domain Name contains the MARLBORO Trademark in its entirety, adding only a hyphen and the word “weed.” As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, section 1.8 of WIPO Overview 3.0 states: “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.” Therefore, inclusion of the word “weed” in the Disputed Domain Name is irrelevant. Finally, “the insertion of a hyphen… [is] not [a] relevantly distinguishing feature[].” Western Union Holdings, Inc. v. Anna Valdieri,WIPO Case No. D2006-0884.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “Respondent is not commonly known by the Disputed Domain Name” because the WhoIs record identifies Respondent as “William Gharapetian”; and “Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any, of the enumerated factors is applicable here. However, the enumerated factors are not exhaustive, and Complainant has argued that, among other things, bad faith exists pursuant to the so-called passive-holding doctrine. As described in section 3.3 of the WIPO Overview 3.0:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Here, the Panel finds that the MARLBORO Trademark has a high degree of distinctiveness and a wide reputation, given the numerous registrations worldwide by which it is protected and the length of time for which it has been protected; Respondent has not submitted a response and has not offered any evidence of actual or contemplated good-faith use; and it is implausible that there is any good faith use to which the Disputed Domain Name may be put, given the strength of the MARLBORO Trademark and the addition of the word “weed” (which describes marijuana, a substance that is illegal in many jurisdictions and, in any event, presumably is unrelated to any products or services offered by Complainant under the MARLBORO Trademark).
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: November 14, 2018
1 The Panel independently discovered that this trademark registration was cancelled on August 10, 2018 (prior to the date on which the Complaint was filed) for failure to file an acceptable declaration under Section 8 of the Lanham Act. Accordingly, Complainant should have included this information in the complaint – or, better yet, excluded all references to this registration from the Complaint in the first place. In any event, the cancellation is irrelevant to this proceeding, and the Panel does not consider this cancelled registration in reaching its decision.
2 Other than the cancelled trademark registration, as discussed in footnote 1, supra.
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