The Complainant is Philip Morris USA Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / shilei, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2020, 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 May 1, 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 May 5, 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 May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020. The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 8, 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 Philip Morris USA Inc. is the owner, among others, of the following registrations for the trademark MARLBORO: - United States Trademark Reg. No. 68,502, registered on April 14, 1908, Goods: Cigarettes; - United States Trademark Reg. No. 3,365,560, registered on January 8, 2008, Goods: Tobacco Products; and, - United States Trademark Reg. No. 3,419,647, registered on April 29, 2008, Goods: Tobacco Products. Moreover, the Complainant is also the owner, among the others, of the domain names: - - The disputed domain names were registered on March 12, 2020 and resolve to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. 5. Parties’ Contentions A. Complainant The Complainant argues that the six disputed domain names are confusingly similar to its MARLBORO trademark, considering that they reproduce entirely the trademark MARLBORO. The addition of the generic terms “www”, “quiz”, “quizz”, “quz”, “qui”, and “qiz” does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark. The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark. The disputed domain names have been registered and are being used in bad faith. The disputed domain names are passively held by the Respondent and at the same time deprive the Complainant of reflecting its own mark in the disputed domain names. The Complainant requests that the disputed domain names be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain names are 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 respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant. Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate. A. Identical or Confusingly Similar The Complainant has shown that it owns trademark rights in the MARLBORO trademark. The Panel considers that the disputed domain names differ from the MARLBORO trademark only by the addition of the terms “www”, “quiz”, “quizz”, “quz”, “qui”, and “qiz”. It is well established that a domain name that wholly incorporates a trademark generally may be confusingly similar to such trademark for purposes of the Policy despite the addition of other terms (Guccio Gucci S.p.A. v. Brenda Hawkins,WIPO Case No. D2013-0603). The use of descriptive term does not prevent a finding of confusing similarity under the first element. “Where 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. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In view of the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights for the purposes of the Policy. The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has demonstrated that the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks. In its Complaint, the Complainant has provided evidence that the websites associated with the disputed domain names are used to misleadingly divert consumers for commercial gain. The Respondent is using the disputed domain names to direct Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the websites at which the disputed domain names resolve feature multiple third-party links for “tobacco” and “cigarettes”. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain names’ websites (Altria Group, Inc. / Altria Group Distribution Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1127). Prior UDRP decisions have consistently held that respondents that monetize domain names using pay‑per‑click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under the Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under the Policy, paragraph 4(c)(iii). See WIPO Overview 3.0, section 2.9: “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. In accordance with section 2.1 of the WIPO Overview 3.0, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. By not responding to the Complaint, the Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain names. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s MARLBORO trademark. The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods. Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complainant fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel is satisfied that the Complainant has long standing trademark rights that predate the disputed domain names and that this trademark has been put in commercial use for several years. The Panel notes that the disputed domain names are used to divert Internet users to the multiple third-party links for “tobacco” and “cigarettes”. On the basis of the above, the Panel finds that the Respondent registered and is using the disputed domain names with an intent to attract Internet users, for commercial gain, to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (Policy, paragraph 4(b)(iv)). Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain names were registered and are being used in bad faith by the Respondent. On this basis the Panel finds that the Complainant has satisfied the third and last element of 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 names, Eva Fiammenghi
Sole Panelist
Date: June 22, 2020
Full & Egal Universal Law Academy