The Complainant is Philip Morris USA Inc., United States of America (“US”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“US”)/ Rehman Khan, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 16, 2019, 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 October 16, 2019, 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 October 22, 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 the Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019. The Center appointed Angelica Lodigiani as the sole panelist in this matter on November 29, 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 The Complainant is the US company Philip Morris USA, Inc,, owner of numerous trademark registrations worldwide, among which the following US registrations: - MARLBORO, US registration No. 68502 registered in April 14, 1908, for “cigarettes” in class 34; - MARLBORO, US registration No. 3365560, registered on January 8, 2008; - MARLBORO, US registration No. 3419647, registered on April 29, 2008, for Tobacco products, namely smokless tobacco” in class 34. The Panel notes that the US registrations Nos. 3365560 and 3419647 provided in the Complaint have already been cancelled and are “dead” at the time of this Decision. The Panel further notes that when citing the prior rights upon which the Complaint is based, the Complainant should ensure to take all appropriate steps to avoid making reference to trademarks no longer valid as this may give rise to confusion and uncertainties and mislead the Panel. The Complainant has marketed and sold its goods under the MARLBORO trademark since 1883. The Complainant also owns and uses the domain name The disputed domain name was created on August 3, 2019. At the time of the filing and notification of the Complaint, the disputed domain name led to a website displaying the MARLBORO trademark prominently, and offering 335 free cigarette cartons in exchange for completing an online survey. At the end of the survey, visitors are asked to log into Facebook to “share” and “like” the page in order to receive their gift. Additionally, after an Internet user has completed the three survey questions, the Respondent also describes on the website that it “sending (your) answer to Marlboro.com...”. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has invested substantial amounts of money in advertising and promoting its trademark MARLBORO and has developed substantial goodwill in the trademarks. The trademark MARLBORO is therefore uniquely associated with the Complainant and has already been considered a famous worldwide trademark. A. Identical or Confusingly Similar According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark because it fully comprises this trademark followed by a hyphen and the generic word “giveaway”. As the trademark MARLBORO enjoys worldwide reputation and is uniquely associated with the Complainant, it is fully recognizable within the disputed domain name. Moreover, the generic term “giveaway” is closely linked and associated with the Complainant’s trademark and serves only to underscore and increase the confusing similarity with the Complainant’s trademark. Indeed, the Complainant usually offers promotional giveaways to age-verified adult smokers. Moreover, the addition of a hyphen is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. Lastly, the Complainant’s points out that the contents of the website accessed through the disputed domain name also contribute to the confusion. B. Rights or Legitimate Interests The Complainant contends that the Respondent lacks rights or legitimate interests in relation to the disputed domain name because the Complainant did not authorize the Respondent to use its trademark in any manner, including in domain names. Furthermore, the Respondent is not commonly known by the disputed domain name, and the Complainant has never licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent’s website creates the impression that it is authorized and administered by the Complainant. An Internet user is invited to take part to a short survey to get “5 free Marlboro Cartons”. As such, visitors are asked to divulge their personal information. According to the Complainant at best, the purpose of the Respondent could be to increase traffic to the Respondent’s website, and at worst, to perpetrate fraud by exploiting the fraudulently acquired personal information. This kind of use cannot amount to a noncommercial and fair use of the disputed domain name, nor to a bona fide offering of goods and services. C. Registered and Used in Bad Faith According to the Complainant, the disputed domain name was registered and is being used in bad faith, for the following reasons. - The Complainant’s trademark is well known and has been used since 1883, well before the registration of the disputed domain name. - In view of the reputation of the Complainant’s trademark and of the use of the disputed domain name, it is not conceivable that the Respondent was not aware of the Complainant’s trademark at the time it registered the disputed domain name. - The Respondent is using the disputed domain name to access a website where the trademark MARLBORO is displayed prominently. An Internet user landing at the disputed domain name could easily be deceived and misled as to the source of origin of the disputed domain name, believing that it originates from the Complainant. Said Internet user is induced to reveal personal information. It is therefore obvious that the Respondent has in mind a phishing scheme, designed to provide the Respondent with access to the personal information and login credentials of the user. Such data could be used to realize unwarranted commercial gain. Earlier this year in March, the Respondent lost a UDRP case with the Complainant for the domain name - At the time of initial filing of the Complaint, the Respondent, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel agrees with the Complainant that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the trademark MARLBORO in its entirety followed by the dictionary word “giveaway”. Both elements of the disputed domain name are separated by a hyphen. It is generally considered that whenever the relevant trademark is recognizable within a domain name, the addition of a term does not avoid a finding of confusing similarity: see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the addition of the word “giveaway” does not dispel the confusing similarity. Thus, the Panel is satisfied that the first condition under paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name. While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. As such, where a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. The Panel finds that the Complainant has not licensed or otherwise allowed the Respondent to use its MARLBORO trademark or to register the disputed domain name incorporating its trademark. The Respondent does not appear to have been commonly known by the disputed domain name either. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. Rather, the disputed domain name leads to a page displaying the Complainant’s trademark prominently and asking an Internet user to complete a survey in exchange of receiving 5 free MARLBORO cigarette packs. The results of the survey are allegedly sent to the Complainant. Once the survey is completed, the Internet user must login on Facebook to receive the gift. Thus, the Respondent is illegitimately soliciting the participant to the survey to provide his/her Facebook login information. The Respondent probably phishes these sensitive data for some fraudulent purpose. This kind of use of the disputed domain name cannot amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In view of the above, and in the absence of any contrary argument by the Respondent, the Panel is satisfied that also the second condition under the Policy is met. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent has registered and is using the disputed domain name in bad faith. As far as registration in bad faith is concerned, the Panel notes that many earlier UDRP panels have already found that the trademark MARLBORO enjoys reputation, seeamong others, Philip Morris USA Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-2452; Philip Morris USA Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-2373; Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1241991442 /Nelia Andrade, WIPO Case No. D2018-0098, etc. Given the reputation of the Complainant’s trademark, it is not conceivable that the Respondent was not aware of the Complainant’s fame at the time of the registration of the disputed domain name. This is also confirmed by the contents of the website associated with the disputed domain name, where the Complainant’s trademark is displayed prominently and in association with the Complainant’s goods. Further, the word “giveaway” associated with the well-known trademark MARLBORO is likely to add confusion to the Complainant’s trademark as it could induce Internet users to believe that the Complainant is offering some of its products for free. Therefore, the disputed domain name is highly attractive for the Internet users who can be easily misled when facing the disputed domain name. Moreover, the Respondent has been recently involved in another dispute against the Complainant referring to the domain name As far as use in bad faith is concerned, the Panel notes that the disputed domain name is used to attract Internet users with an offer of free MARLBORO cigarette packs in exchange of the completion of a survey. The MARLBORO trademark and logo are displayed prominently, and the website states that the results of the survey would be reported to the Complainant. In order to receive the free MARLBORO cigarette packs, the Internet user must login on his/her Facebook account. Therefore, it is most likely that the Respondent is using the disputed domain name to deceive consumers in order to obtain personal data, which are presumably used for some fraudulent purpose. Thus, the Panel concludes that the Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain or for other profit, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In view of the above, the Panel is satisfied that also the third condition under the Policy is 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 disputed domain name Angelica Lodigiani
Sole Panelist
Date: December 13, 2019
Full & Egal Universal Law Academy