The Complainant is Philip Morris USA Inc., United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Mary Atlas, 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 August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 26, 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 September 1, 2020, providing the registrant and contact information disclosed by the Registrar. The Center invited the Complainant to submit an amendment to the Complaint, and the Complainant filed an amended Complaint on September 4, 2020. On September 1, 2020, the Center transmitted an email in English and Malay to the Parties regarding the language of the proceeding, identified by the Registrar as Malay. The Complainant, on September 4, 2020, timely submitted a request including supporting arguments that English be the language of the proceeding. The Respondent, although invited to do so, did not comment on the language of the proceeding. 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 September 7, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was September 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2020. The Center appointed William R. Towns as the sole panelist in this matter on October 2, 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 manufactures and sells tobacco products, including cigarettes sold under the MARLBORO trademark. The Complainant has used the MARLBORO mark with tobacco and cigarettes since as early as 1883, and obtained its first United States registration for the MARLBORO mark on April 14, 1908 (U.S. Reg. No. 68502). The Complainant has since obtained numerous trademark registrations for the MARLBORO mark issued by the United States Patent and Trademark Office (“USPTO”) including U.S. Reg. Nos. 4171817 and 5379044, registered on July 10, 2012, and January 16, 2018, respectively. The Complainant’s MARLBORO mark is well known and consistently has been recognized by UDRP panelists as a famous mark. 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); and Philip Morris USA Inc. v. Contact Privacy Inc. / Stephanie Sutton,WIPO Case No. D2019-3073. The disputed domain names The Complainant submits that the disputed domain names are identical or confusingly similar to the Complainant’s MARLBORO mark. The Complainant contends that MARLBORO is a well-known and famous mark, and explains that the descriptive Malay words “bolong”, “hitam”, “merah”, and “putih” when translated into English refer to “hole”, “black”, “red”, and “white” respectively. The Complainant asserts that such descriptive words whether in Malay or English do not dispel the confusing similarity of the disputed domain names to the Complainant’s MARLBORO mark. The Complainant remarks that it markets the cigarette brands “Marlboro Red”, “Marlboro Black”, “Marlboro White”, and “Marlboro Hollow Filter”. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondent is not sponsored by or affiliated with the Complainant in any capacity, and has not been given permission by the Complainant to use the MARLBORO mark. According to the Complainant, absent such license or permission no actual or contemplated bona fide or legitimate use of the disputed domain names can be claimed by the Respondent. The Complainant further asserts that the Respondent has not been commonly known by the disputed domain names. The Complainant refers to “Mary Atlas” as the WhoIs registrant of the disputed domain names. The Complainant remarks that the name “Mary Atlas” does not resemble any of the disputed domain names. The Complainant also observes that at the time of the filing of the Complaint the Respondent was using a privacy service and thus cannot claim to have been commonly known by any of the disputed domain names. The Complainant contends that the Respondent is using the disputed domain names to redirect Internet users to websites resolving to a blank page lacking any content. According to the Complainant, the Respondent has neither used or demonstrated any attempt to make a legitimate use of the disputed domain names, evincing a lack of rights or legitimate interests in the disputed domain names. The Complainant maintains that the disputed domain names have been registered and are being used in bad faith. The Complainant submits that its MARLBORO mark is famous and well-known, with numerous USPTO trademark registrations. According to the Complainant, the MARLBORO mark is so closely linked and associated with the Complainant that the Respondent’s registration and use of the mark is reflective of bad faith. The Complainant asserts it would be illogical to believe that the Respondent registered the disputed domain names without intent to target the Complainant. The Complainant contends that it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s well-known and famous MARLBORO mark when registering the disputed domain names, citing Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant also cites Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO D2000-0226, for the proposition that where a domain name is so obviously connected with a well-known name and product, the “[…] very use by someone with no connection with the products suggests opportunistic bad faith”. The Complainant submits that the Respondent’s apparent linking of the disputed domain names to inactive sites does not preclude a finding of bad faith in the circumstances of this case. The Complainant reiterates that the Respondent has registered 10 domain names infringing upon the Complainant’s MARLBORO mark. According to the Complainant, the sheer number of infringing domain names registered by the Respondent is sufficient to establish that the Respondent has engaged in a bad faith pattern of cybersquatting, establishing both bad faith registration and bad faith use of the disputed domain names under the Policy. The Complainant also submits that the Respondent employed a privacy service in bad faith, concealing the Respondent identity and delaying disclosure of the actual underlying registrant. In relation to the language of the proceeding, the Complainant submits it is unable to communicate in Malay and that translation of the Complaint would unfairly disadvantage and burden the Complainant, delaying the proceedings and adjudication of the matter. The Complainant asserts that the disputed domain names are comprised of Latin characters, adding that MARLBORO has no specific meaning in Malay. Referring to paragraph 11 of the Rules, the Complainant maintains, it would be unduly burdened if required to arrange and pay for translation. The Complainant contends that the Respondent has resorted to behavior disrupting the Complainant’s business and requiring the Complainant to devote significant time and resources to address the Respondent’s abusive conduct. The Complainant represents that UDRP panels in previous instances have allowed cases to proceed in English even when the language of the registration agreement results in a default language other than English. B. Respondent The Respondent did not reply to the Complainant’s contentions or comment regarding the language of the proceeding. 6. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In this instance Malay is the default language of the proceeding pursuant to the Respondent’s registration agreement. In order that such proceedings are conducted with due expedition, paragraph 10 of the Rules confer upon panels the authority to conduct the proceedings in a manner considered appropriate while also ensuring that each party is treated with equality and afforded a fair opportunity to present its case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, and relevant decisions cited therein. Against this background, UDRP panels have observed that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios may include among others (i) evidence showing that the respondent can understand the language of the complaint; (ii) a scenario in which the language or script of the respondent’s domain name is the same as the complainant’s mark; (iii) potential unfairness or unwarranted delay if ordering the complainant to translate the complaint; or (iv) other indicia that it would not be unfair to proceed in a language other than that of the registration agreement. Id. The Complainant’s famous MARLBORO mark clearly is the dominant element in the language or script of the disputed domain names that have been registered by the Respondent. MARLBORO is an English word with no translation in Malay, and the descriptive Malay words “bolong”, “hitam”, “merah”, and “putih” in the disputed domain names translate in English as “hole”, “black”, “red”, and “white” respectively. The Respondent has registered multiple domain names combining the Complainant’s MARLBORO mark with descriptive words that when translated to English replicate the “Marlboro Red”, “Marlboro Black”, and “Marlboro White” brands marketed by the Complainant. The Respondent, when registering the disputed domain names, self-identified as Mary Atlas, providing a street address and telephone number from the United States. In view of the foregoing, the Panel concludes that the Respondent in all likelihood is conversant in English, and would be capable of understanding the language of the Complaint. The Respondent when registering multiple domain names appropriating the Complainant’s MARLBORO mark provided contact information creating a nexus with the United States. Accordingly, and for the reasons discussed above, the Panel concludes it would not be unfair in this case to proceed in a language other than that of the registration agreement. See WIPO Overview 3.0, section 4.5.1. Noting the absence of any participation by the Respondent, the Panel considers that ordering the Complainant to translate the entire proceeding in Malay would subject the Complainant to potential unfairness, undue burden and expense, and unwarranted delay. The Panel after due consideration thus has determined that the language of the proceeding will be English. See WIPO Overview 3.0, sections 4.5.1 and 4.5.2, and relevant cases cited therein. See also Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1246997303 / admin admin,WIPO Case No. D2020-2021. 7. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is concerned with providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0, section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names are confusingly similar to the Complainant’s MARLBORO mark, in which the Complainant has established rights through registration and long and extensive use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The Complainant’s MARLBORO mark is recognizable in each of the disputed domain names. The inclusion of the descriptive Malay terms “bolong”, “hitam”, “merah”, and “putih” (“hole”, “black”, “red”, and “white” in English) does not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. Generic Top-Level Domains (“gTLDs”) – in this case “.com”, “.net”, “.org”, and “.info” – are typically disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain names under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s well-known MARLBORO mark. Nevertheless, the Respondent has registered multiple domain names appropriating the Complainant’s MARLBORO mark. As previously noted, the disputed domain names do not appear to be associated with any active websites. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making 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. The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s famous MARLBORO mark in mind when registering the disputed domain names. The Panel further considers that the Respondent in all likelihood registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s well-known mark. Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s MARLBORO mark, and there is no indication that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and the Complainant’s well-known MARLBORO mark when registering the disputed domain names. The Panel concludes that the Respondent in all likelihood registered the disputed domain names seeking to exploit and profit from the Complainant’s distinctive mark. The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “[…] the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Complainant’s MARLBORO mark is distinctive and well-known. It is clear beyond cavil that the Respondent was aware of and targeted the Complainant’s mark when registering the disputed domain names. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain names that could be made by the Respondent. The Respondent’s conduct in these circumstances suggests opportunistic bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 domains William R. Towns 1 See WIPO Overview 3.0 , section 1.7 . 2 See WIPO Overview 3.0, section 1.8. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 3 Id. 4 See WIPO Overview 3.0 , section 1.11 .
Sole Panelist
Date: October 14, 2020
Full & Egal Universal Law Academy