Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Danny Italia of Bari, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “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 January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 25, 2019.
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 Respondent of the Complaint, and the proceedings commenced on January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2019.
The Center appointed Clive L. Elliott QC. as the sole panelist in this matter on February 26, 2019. 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
According to the publicly available WhoIs information, the Domain Name was registered on December 4, 2018, and resolves to an active website containing various advertisements.
Complainant is the owner of numerous trademark registrations within the United States, including the following relevant to this matter (“Complainant’s Mark”):
TRADEMARK
JURISDICTION / TM OFFICE
REGISTRATION NUMBER
REGISTRATON DATE
GOODS
MARLBORO
US / USPTO
68,502
April 14, 1908
Cigarettes
MARLBORO
US / USPTO
3,365,560
January 8, 2008
Tobacco Products, Namely, Snus
MARLBORO
US / USPTO
3,419,647
April 29, 2008
Tobacco Products, Namely, Smokeless Tobacco
Complainant is also the registered owner of domain names (which points to Complainant’s website at “www.”) and . 5. Parties’ Contentions A. Complainant
Complainant contends that it has spent considerable time and money protecting its intellectual property rights through advertising and promoting Complainant’s Mark throughout the United States and has thus developed substantial goodwill in Complainant’s Mark.
Accordingly, it is argued that through such widespread and extensive efforts that Complainant’s Mark has become distinctive worldwide and is uniquely associated with Complainant and its products.
Complainant submits that the Domain Name is confusingly similar to Complainant’s Mark, as it is made up of Complainant’s Mark in its entirety, with the addition of two added letters “xx” at the beginning.
Complainant notes that Respondent registered the Domain Name on December 4, 2018, which is significantly after registration of Complainant’s Mark in 1908, first use in commerce in 1883, and registration of Complainant’s domain name in 2000.
Complainant goes on to state that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark.
Further, Complainant contends that Respondent is not commonly known by the Domain Name and therefore cannot be regarded as having acquired rights to or legitimate interests in the Domain Name.
Complainant asserts that, as Complainant’s Mark is a world-famous trademark, it is unlikely that Respondent did not know of Complainant’s rights in Complainant’s Mark at the time of registration. Complainant goes on to claim that Respondent has registered the Domain Name in bad faith by causing confusion and benefiting from Complainant’s Mark, by redirecting Internet users to the Domain Name’s website. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used and registered (relevantly in the United States) and that Complainant has for many years marketed and sold, inter-alia, cigarettes and tobacco products under and by reference to Complainant’s Mark.
Complainant contends that the Domain Name reproduces Complainant’s Mark in its entirety, save for the addition of the letters “xx”. It is unclear what the letters “xx” purport to mean and Respondent does not elucidate on this. In any event, the addition of the two letters does nothing to avoid a finding of confusing similarity between Complainant’s Mark and the Domain Name.
There is clear merit in Complainant’s submissions and in the absence of any attempt to refute them it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is not identical to but for the reasons set out above confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant argues first that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Secondly, Complainant contends that Respondent is not commonly known by the Domain Name. Thirdly, Complainant contends that Respondent is redirecting Internet users to the Domain Name’s website.
Respondent makes no effort to refute any of these allegations/arguments. Absent any response or explanation the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered or Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Mark, and its international repute the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.
Regarding use in bad faith, the Panel considers that the use of the Domain Name in connection with a blog displaying different ads is likely to be pretextual, and thus finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name and since. Indeed, the Domain Name consists of Complainant’s Mark and the non-distinctive letters “xx”. As a result, Internet users might reasonably but wrongly believe that the Domain Name is somehow associated with or endorsed by Complainant.
The Panel thus finds that the third limb of the Policy has been met. 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 Domain Name be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: March 18, 2019
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