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 Song Chansideth, Cambodia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 18, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on July 27, 2021. 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 is a multinational company that operates a business selling nicotine based products globally. The Complainant holds numerous registrations for the trademark MARLBORO globally, including, for example, United States Registration No. 68502 registered on April 14, 1908 and Cambodia Registration No. KH-T-1991-2 applied for on August 9, 1991 both of which it uses to designate “cigarettes”. The Complainant owns domain names including The Disputed Domain Name The Complainant cites numerous trademark registrations including United States Trademark Registration No. 68502, registered on April 14, 1908, and United States Trademark Registration No. 4171817, registered on July 10, 2012 for the mark MARLBORO, as prima facie evidence of ownership. The Complainant submits that the trademark MARLBORO is well-known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MARLBORO trademark, and that the addition of the country name “cambodia”, and the generic Top‑Level Domain (“gTLD”) “.com” is not sufficient to avoid a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the “Respondent is not sponsored by or affiliated with Complainant in any way”. The Complainant also contends that it “has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names [… that] Respondent is not commonly known by the Disputed Domain Name [… and that] Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name”. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the widespread fame of the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the trademark MARLBORO in the United States and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the MARLBORO trademark, the Panel observes that the Disputed Domain Name comprises (a) the Complainant’s trademark MARLBORO, (b) followed by the country name “cambodia”, and (c) followed by the gTLD “.com”. It is well-established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “marlborocambodia”. It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word such as, in this case, “cambodia” (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345); eBay Inc. v. Vann Heng, iTech,WIPO Case No. D2013-2108. This Panel finds that the addition of the word “cambodia” is an additional element that does not serve to prevent a finding of confusing similarity of the Disputed Domain Name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not the Respondent’s name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to a webpage “featuring the MARLBORO trademark and roof design in connection with a login portal prompting users for the email and password”. The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply. Having regard to the associated website content, the Panel also finds that the use of the Disputed Domain Name for phishing by passing itself off as somehow affiliated with the Complainant, appears to be intentional illegal activity that can never confer rights or legitimate interests on a respondent, and that such a false suggestion of affiliation is not a fair or legitimate use (see WIPO Overview 3.0, section 2.13.1). This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s famous trademark MARLBORO when it registered the Disputed Domain Name (see Philip Morris USA, Inc. v. Michele Dinoia, SZK.com,WIPO Case No. D2005-0171 (“Complainant’s trademarks are not only distinctive but also largely used and well-known all over the world”); Philip Morris USA Inc. v. Malton International Ltd.,WIPO Case No. D2009-1263 (“the worldwide renown of the Complainant’s mark”); Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan,WIPO Case No. D2011-1735 (“the well-known Trademark of the Complainant”); and Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-2452 (“the fame of the MARLBORO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain names without knowledge of the Complainant’s right”). In addition, unauthorized registration of a domain name containing a third party trademark long after the registration of such trademark can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007‑1415). In this case, the Complainant’s rights in its trademark predate the Respondent’s registration of the Disputed Domain Name by 112 years. On the issue of use, the Complainant’s uncontested evidence is that “Respondent is using the Disputed Domain Name’s website to fraudulently pose as Complainant for purposes of launching a phishing attack”. The Panel accepts the evidence that the Respondent is attempting to use the Disputed Domain Name to extract personal information from unsuspecting Internet users by impersonating the Complainant and, in line with numerous previous Panel decisions, such behavior is manifestly considered evidence of bad faith (see WIPO Overview 3.0, section 3.1.4). This Panel finds that the Respondent has taken the Complainant’s well-known trademark MARLBORO and incorporated it in the Disputed Domain Name along with the country name “cambodia”, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Nicholas Weston
Sole Panelist
Date: August 3, 2021
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