Complainant is Philip Morris USA Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Super Privacy Service LTD c/o Dynadot, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 February 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2020. The Center appointed Anne Gundelfinger as the sole panelist in this matter on March 13, 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 Complainant is Philip Morris USA Inc., one of the largest tobacco producers and a leading cigarette maker in the United States. Marlboro is the Complainant’s leading cigarette brand, as well as the leading cigarette brand in the United States. Complainant owns at least one United States federal trademark registration for its MARLBORO mark for cigarettes namely trademark Reg. No. 68,502 registered on April 14, 1908 and claiming use from 1883 (hereafter the “Mark”). Complainant also owns the domain names The two disputed domain names were registered on December 10, 2019 by Respondent Super Privacy Service LTD c/o Dynadot, and each disputed domain name has resolved and does resolve to a webpage offering such disputed domain name for sale for USD 990. 5. Parties’ Contentions A. Complainant Complainant asserts that it is the owner of numerous trademark registrations for the MARLBORO mark citing in particular Registration No. 68,502 dating from 1908, as well as Registration Nos. 3,365,560 and 3,419,647, both registered in 2008 (the “Marks”). Complainant further asserts that it has invested substantial time, effort, and money developing and advertising the Marlboro brand, and through widespread and lengthy use, the Marlboro brand is well known and famous worldwide. Complainant contends that the disputed domain names are confusingly similar to the Mark because the disputed domain names both wholly incorporate the MARLBORO mark along with the generic/descriptive terms “white” and “bright”, noting that both of these terms are used in various Marlboro-based product and line names used by Complainant, specifically the Marlboro Bright Leaf product (launched in 2009 and targeted to the United Kingdom market) and the Marlboro White line (Complainant’s lower tar and nicotine line of cigarettes). Complainant argues that the fact that such terms are closely associated with Complainant’s Mark and product offerings serves to underscore and increase the confusingly similarity between the disputed domain names and Complainant’s Mark. Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain names, and that such disputed domain names were registered and have been used in bad faith. In support of these arguments, Complainant asserts that (a) Respondent is not sponsored or affiliated with Complainant in any way, (b) Complainant has given no permission or license for use of the disputed domain names, (c) Respondent is not known by the disputed domain names, (d) Complainant’s Mark is well known and famous, (e) Respondent’s only use of the disputed domain names is to offer them for sale for substantially more than the out-of-pocket costs of registration, and (f) the registrant has cloaked its identity by use of a domain name privacy service. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of 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 a preliminary matter, the Panel notes that, in support of its trademark rights, Complainant has cited two United States federal registrations for the MARLBORO mark that have been cancelled, specifically Registration Nos. 3,365,560 and 3,419,647, both registered in 2008 and then cancelled in 2018, according to United State Patent and Trademark Office (“USPTO”) records. Fortunately for Complainant, the first registration it cites (Registration No. 62,580) is valid and subsisting and dates from 1908 and relies on actual use dating from 1883. Complainant benefits further from (a) the Panel’s willingness to assume that the citation of cancelled registrations was not intentional but rather a drafting oversight, and (b) the Panel’s willingness to search USPTO records to confirm Complainant’s well-established rights in MARLBORO and MARLBORO-based trademarks, which the Panel hereby takes notice of. However, the Panel admonishes Complainant for relying on cancelled registrations and strongly suggests that Complainant take greater care in preparing future complaints. That said, it is clear that Complainant has long and well-established common law and federally registered trademark rights in the United States in the MARLBORO Mark, which has been widely used nationwide for well over a century. Indeed, the Mark has been recognized by other UDRP panels as famous and well known. See, Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“As has been accepted by numerous panels previously, the MARLBORO® trademark is famous worldwide…”); Philip Morris USA Inc. v. Malton Int’l Ltd.,WIPO Case No. D2009-1263 (noting the “worldwide renown” of the MARLBORO marks); and Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (recognizing the fame of the MARLBORO marks). The disputed domain names both wholly incorporate the famous MARLBORO Mark in its entirety along with the product and line identifiers “Bright” and “White” used by Complainant for its Marlboro White and Marlboro Bright Leaf products. As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “[w]here 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”. Moreover, here the descriptive terms added to the disputed domain names clearly refer directly to products of Complainant. Accordingly, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s MARLBORO Mark, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205. Here, Complainant has demonstrated long and well-established rights in the MARLBORO Mark and has credibly asserted that it has granted no license or other authorization to Respondent to use the disputed domain names. Respondent has filed no response in this proceeding and has not otherwise replied or provided any evidence in support of any right or legitimate interest. Accordingly, the Panel finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain names and Respondent has not rebutted that prima facie showing. The Panel therefore concludes that Complainant has met its burden under the second element of the test. C. Registered and Used in Bad Faith The Panel finds this to be a clear and straightforward case of cybersquatting. Indeed, it is hard to imagine a clearer case of cybersquatting in violation of the Policy. The disputed domain names both wholly incorporate the extremely well-known MARLBORO Mark and additional terms that make it clear that Respondent is targeting and exploiting Complainant’s MARLBORO Mark and product names. Respondent is plainly offering the disputed domain names for sale, presumably to the legitimate trademark owner, for an amount substantially greater than the out-of-pocket costs to acquire them. And Respondent used a privacy service to cloak its identity. As set forth in the Policy, these circumstances are clear evidence of bad faith use and registration. See, paragraph 4(b)(i) of the Policy. See also, sections 3.1 and 3.6 of the WIPO Overview 3.0, and cases cited therein. Accordingly, the Panel finds that the third element of the test is 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 names Anne Gundelfinger
Sole Panelist
Date: March 25, 2020
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