The Complainant is Philip Morris USA Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondents are asdasd asdasdasd,asdasd asdasdasd, United States, and qweqwe qweqweqwe, qweqwe qweqweqwe, United States (hereafter “the Respondent”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent asdasd asdasdasd is listed as the registrant of the disputed domain names 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 the Respondent of the Complaint, and the proceedings commenced on September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. The Respondent did not submit any response. The Center appointed William R. Towns as the sole panelist in this matter on October 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. Subsequently, on October 12, 2020, the Registrar informed the Center that qweqwe qweqweqwe is listed as the registrant of the disputed domain name The Complainant submitted an amended Complaint to the Center on October 15, 2020, including a request that the disputed domain names be consolidated into a single proceeding. The Respondent was informed that the due date for Response was October 20, 2020. The Respondent, although afforded the opportunity to do so, did not submit any response. 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 in on April 14, 1908 (United States 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 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 Complaint remarks that MARLBORO is a well-known and famous mark, and maintains that the descriptive Malay words “merah” and “putih” (“red” and “white” in English) in the disputed domain names do not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark. The Complainant explains that the Complainant markets cigarette brands specifically called “Marlboro Red” and “Marlboro White”. 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 contends that the Respondent is using the disputed domain names to redirect Internet users to a website resolving to a blank page lacking any content. According to the Complainant, the Respondent has neither used nor 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 Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant also cites Parfums Christian Dior v. Javier Garcia Quintas,WIPO Case No. 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Issue: Consolidation of Multiple Domain Names and Respondents The Complainant has requested that the disputed domain names registered by the two named registrants and identified in the amended Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2, and cases cited therein. The facts in the instant record strongly suggest that the disputed domain names are subject to common control. The disputed domain names were registered on April 27, 2020, using the same Registrar. In the Registrar’s initial confirmation to the Center on September 14, 2020, all ten of the disputed domain names were registered under the same registrant – asdasd asdasdasd. It was not until October 12, 2020, that the Registrar informed the Center that nine of the disputed domain names were registered in the name of asdasd asdasdasd; whereas, one of the disputed domain names was registered in the name of qweqwe qweqweqwe. The Respondent when registering the disputed domain names submitted identical (and likely fictitious) contact and registration information, including the same email address, and the same telephone number. The record is convincing that the Complainant has been the target of common conduct by the Respondent directly affecting the Complainant’s rights – namely, the Respondent’s attempt to falsely suggest an affiliation or connection with the Complainant and the Complainant’s MARLBORO mark. The Panel, taking into account the Respondent’s use of the disputed domain names in a manner directly affecting the Complainant’s rights, and further finding that common questions of law and fact are predominant, concludes that consolidation would be procedurally efficient, and fair and equitable to all Parties. Accordingly, the Panel will proceed to a decision on the merits of these domain name disputes. 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.1 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.2 The inclusion of the descriptive Malay terms “merah” and “putih” (“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.3 Generic Top-Level Domains (“gTLDs”) – in this case “.com” – 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.4 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 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: (i) 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 undertaking 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 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 domain names 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 21, 2020
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