The Complainant is Philip Morris USA Inc., United States of America (“US”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Raph Lionnel Noundjeu, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2020, 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 March 9, 2020 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 March 11, 2020. 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 March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020. The Center appointed Marilena Comanescu as the sole panelist in this matter on April 14, 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. The language of the proceedings is English. 4. Factual Background The Complainant is a company specialized in manufacturing and selling cigarettes. The Complainant uses the mark MARLBORO to sell cigarettes in the US ever since 1883, with the modern history of the brand beginning in 1955. The Complaint is based on the Complainant’s US trademark registrations such as the US trademark No. 68,502 of April 14, 1908 for MARLBORO, covering goods in class 34. The Complainant’s main website is available at “www.marlboro.com”. Previous UDRP panels have found that the Complainant’s MARLBORO trademark is famous worldwide. See for example Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin / Whois Privacy Corp., WIPO Case No. D2017-0704 and cases cited therein. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark MARLBORO with a third party trademark added (i.e., NEWPORT), the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the abscence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Procedural Issue: Transfer of The Disputed Domain Name Containing a Third Party’s Trademark The Complainant affirms that the disputed domain name contains, in addition to its trademark, a trademark owned by a third party, NEWPORT. This fact raises the important procedural issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought in the Complaint – being, transfer of the disputed domain name to the Complainant. The majority of the previous UDRP panels dealing with this issue have granted the requested remedy of transfer. See WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com,WIPO Case No. D2012-0674 and the comments thereof. At the same time, as stated in WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, supra, “Neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy.” Furthermore, this Panel found that the term Newport may also refer to two cities, one in the United Kingdom and another in the US1. For all the above, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant in the event that the present case meets all the three requirements of the Policy. B. Identical or Confusingly Similar The Complainant holds rights in the MARLBORO trademark. The disputed domain name Irrespective if the added term refer to a third party mark or is a geographic descriptor, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name. Numerous UDRP panels have considered that the addition of other terms (whether descriptive or geographic term, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. Also, section 1.12 of the WIPO Overview 3.0 provides that, where the Compainant’s trademark is recognizable within the disputed domain name, the addition of other third-party trademark is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark under the first element of the Policy. Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MARLBORO, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See section 2.1 of the WIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions to advance a claim to any rights or legitimate interests in the disputed domain name. Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, at the time of drafting the Complaint the disputed domain name resolved to a website featuring the MARLBORO trademark and offering for sale allegedly unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent. In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine MARLBORO branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in section 2.8 of the WIPO Overview 3.0 as follows: A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder, and the reseller or distributor must not try to “corner the market” in domain names that reflect the trademark. This summary is based on UDRP panel decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. At least two conditions that are outlined have clearly not been satisfied by the Respondent in this case: at the time of drafting the Complaint, on the website corresponding to the disputed domain name (i) there was no accurate information regarding the Respondent and its non-existent relationship with the Complainant thus generating a likelihood of confusion for the Internet users accessing the Respondent’s website and (ii) there were also offered to sale third parties competing goods not only MARLBORO cigarettes. For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith The Complainant’s MARLBORO trademark is used in commerce since 1883 and has become famous worldwide. The disputed domain name was registered in 2020 and incorporates the MARLBORO mark together with an additional term. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. According to the case file evidence, at the time of filing the Complaint the disputed domain name The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. This impression is increased by the use of the Complainant’s trademark in the disputed domain name and the content on the website corresponding to the disputed domain name. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks, logo and images indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name Further, it has been found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption of registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. The Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu 1 See Section 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the“WIPO Overview 3.0” regarding the powers of the Panel to conduct independent limited searches.
Sole Panelist
Date: April 27, 2020
Full & Egal Universal Law Academy