The Complainant is Philip Morris USA Inc., United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Contact Privacy Inc, Canada / Stephanie Sutton, Canada. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 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 December 23, 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 January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2020. The Center appointed Peter Burgstaller as the sole panelist in this matter on January 30, 2020. 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 the trademark MARLBORO, for which it has various registrations in numerous jurisdictions internationally, including registration number 68,502 with the registration date of April 14, 1908 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) in respect of cigarettes (Annex 1 of the Complaint). Additionally, the Complainant is the registrant of the domain name The disputed domain names currently resolve to inactive sites and are not being actively used (Annex 3 of the Complaint). The Respondent registered the disputed domain names on October 10, 2019 without having permission to use the Complainant’s trademarks in any manner, including in domain names (Annex 2 of the Complaint). When registering the disputed domain names, the Respondent was using a privacy WhoIs service (Annex 2 of the Complaint). 5. Parties’ Contentions A. Complainant The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks and thus has developed substantial goodwill in the MARLBORO trademarks. The MARLBORO trademark was first registered in 1908 with the USPTO and the Complainant’s first use in commerce of this trademark dates back to 1883. The disputed domain names are confusingly similar to the Complainant’s famous MARLBORO trademarks; all of them incorporating the MARLBORO trademark. The Complainant moreover is the registrant of the domain name The Respondent has no rights or legitimate interests in respect of the disputed domain names; it is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register the disputed domain names. Finally, the Respondent has registered the disputed domain names on October 10, 2019 in bad faith and uses the disputed domain names in bad faith; the Respondent was clearly aware of the Complainant and its trademarks at the time of registration of the disputed domain names. Although the Respondent did not use the disputed domain names, passive holding is within the concept of bad faith use since there is no plausible reason for authorized future active usage. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar As many UDRP panels already held, the MARLBORO trademark is famous throughout the world (see e.g. Philip Morris USA, Inc. v. Michele Dinoia, SZK.com,WIPO Case No. D2005-0171; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan,WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-2452). The disputed domain names entirely incorporate the MARLBORO trademark and are confusingly similar to the Complainant’s trademark MARLBORO since where the relevant trademark is recognizable within the disputed domain names the mere addition of a hyphen or other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 (see section 2.1 of the WIPO Overview 3.0). In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark MARLBORO in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith It is the Panels conviction that the fame of the MARLBORO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain names without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith; this conviction is especially supported by the fact that the disputed domain names incorporate the Complainant’s trademark MARLBORO entirely together with terms which are merely descriptive (e.g., “mail”, “email”, and “mailbox”). In fact, the use of the terms at issue in connection with the famous mark MARLBORO rather strengthen the impression that the disputed domain names are in some way connected to the Complainant or at least free ride on the reputation of the Complainant’s name and trademark MARLBORO. Although the disputed domain names currently resolve to inactive sites and are not being actively used, previous UDRP panels have found that bad faith use under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent – inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC,WIPO Case No. D2002-0131). This Panel also concludes that the present passive holding of the disputed domain names, constitutes a bad faith use, putting emphasis on the following: - the Complainant’s trademarks are famous worldwide with strong reputation and are well-known globally; - the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain names; - the disputed domain names incorporate the Complainant’s trademark MARLBORO, and are thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); - all 12 disputed domain names were registered on the same day; and - there is no conceivable plausible reason for good faith use with regard to the disputed domain names. There are recognized legitimate uses of privacy and proxy registration services, but where it appears that respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. In the present case the Respondent did not file a Response; moreover, the facts of the present case lead this Panel to the conclusion that the Respondent merely employed a privacy service to hide its identity from potential disputes. In such cases the use of a privacy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant is also an indication of bad faith (see section 3.6 of the WIPO Overview 3.0). Taking all these facts and evidence into consideration this Panel finds that the disputed domain names have been registered and are being 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 names, Peter Burgstaller
Sole Panelist
Date: February 13, 2020
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