The Complainant is Philip Morris USA Inc of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Mikhail Abamchenko, Private Person of Saint Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with REG.RU LLC (the "Registrar"). 3. Procedural History
The Complaint was filed in Russian and in English with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2016, 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 Registrar also confirmed the language of the registration agreement as Russian.
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 in Russian, and the proceedings commenced on March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified in Russian the Respondent's default on April 12, 2016.
The Center appointed Ladislav Jakl as the sole panelist in this matter on April 15, 2016. 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 markets and sells cigarettes in the United States of America, including cigarettes under its famous MARLBORO trademark, which have been made and sold since 1883, with the modern history of the brand beginning in 1995. The Complainant is the holder of many MARLBORO trademarks, among others, on the Principal Register of the U.S. Patent and Trademark Office, MARLBORO trademark, registration No. 68,502, registered on April 14, 1908, for cigarettes; MARLBORO and Red Roof design, registration No. 938,510, registered on July 25, 1972, for cigarettes (Annex E to the Complaint). The Complainant is a holder of the domain name created before the disputed domain name (Annex E to the Complaint).
The disputed domain name was registered on August 12, 2015 (Annex A to the Complaint). The website to which the disputed domain name resolves is in the Russian language. It offers the disputed domain name for sale. 5. Parties' Contentions A. Complainant
The Complainant contends that the dominant part of the disputed domain name comprises the term "marlboro " and the top level domain ".pw", which is confusingly similar to the registered trademarks MALBORO , registered before date of registration of the disputed domain name. The Complainant concludes that disputed domain name is confusingly similar to the Complainant's trademarks.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, seeing that the Respondent has no connection or affiliation with the Complainant, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word "Malboro" and has not received any license, authorization or consent to use the MARLBORO trademarks in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. The Complainant also notes that there is no evidence of the Respondent's use of, or demonstrable preparations to use, in connection with a bona fide offering of goods and services. The Respondent is trying to sell the disputed domain name, both on his own website and through the well-known online auction site, "www.eB". Moreover the Respondent is using the Complainant's trademarks in order to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO trademarks (Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
As to the question whether the disputed domain name was registered and is being used in bad faith, the Complainant contends that the Respondent has registered the disputed domain name by doing so with full knowledge of the Complainant's rights in the MARLBORO trademarks. The MARLBORO trademark has been in use since 1883 and was registered in the United States of America in 1908, whereas the Respondent's disputed domain name was registered more than a century later, on August 12, 2015. The previous UDRP decisions have stated bad faith in a case the disputed domain name was registered where the Respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL,WIPO Case No. D2014-2264; Philip Morris USA Inc.v.ADN HOSTING, WIPO Case No. D2007-1609). Furthermore, the Complainant contends that the Respondent's using the exact MALBORO trademarks to divert Internet users from Complainant's true website demonstrates bad faith use under the Policy (Popular Enters, LLC v. Am. Consumers First et al.,WIPO Case No. D2003-0742). By registering and offering the disputed domain name for sale the Respondent intentionally attempted to attract Internet users to purchase the disputed domain name for commercial gain. Such offering is an indicative of bad faith (Bologna Fiere S.p.A. v. Currentbank- Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars,WIPO Case No. D2004-0830). Moreover, the registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the use of the MALRBORO trademarks and that it is further evidence of bad faith (Osuuspankkikeskus OSK v. R,WIPO Case No. D2006-0461).
In accordance with Paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name be transferred to the Complainant. 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, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the question of the language of the proceeding, the Registrar confirmed that the language of registration agreement is Russian. The Complainant submitted its Complaint both in Russian and in English. The Respondent did not provide any comments in this regard and did not file a response in Russian. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement. Taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836) the Panel decides that the language of this administrative proceeding will be English in accordance with paragraph 11(a) of the Rules. A. Identical or Confusingly Similar
The Complainant is the holder of many MARLBORO trademarks, among others, on the Principal Register of the U.S. Patent and Trademark Office, MARLBORO trademark, registration No. 68,502, registered on April 14, 1908, for cigarettes; MARLBORO and Red Roof design, registration No. 938,510, registered on July 25, 1972, for cigarettes (Annex E to the Complaint). In the Panel's assessment, there is no doubt, that the disputed domain name incorporates the Complainant's trademarks MARLBORO in its entirety and that the addition of the country code Top Level Domain "pw" does not sufficiently distinguish the disputed domain name from the trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694). The Complainant is a holder of the domain name created before the disputed domain name (Annex E to the Complaint). For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant's trademark MARLBORO in which the Complainant has rights, and therefore, the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:
(i) before the Respondent obtained any notice of the dispute, has not used or has not made demonstrable preparations to use the disputed 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 (as individual, business, or other organization) has not been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no rights or legitimate interests in the disputed domain name, seeing that the Respondent has no connection or affiliation with the Complainant, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word "Malboro" and has not received any license, authorization or consent to use the MARLBORO trademarks in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. As the Respondent has never been authorized by the Complainant to use the Complainant's trademarks in any way, it may be difficult for the Respondent to establish that he has rights or any legitimate interests in the domain name (Swarovski (Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610). The Respondent has not acquired any rights or legitimate interests whatsoever in the disputed domain name or any name corresponding to the trademark MALBORO. The Respondent registered the disputed domain name in August 12, 2015 and the mere registration of the domain name does not give the owner a right or a legitimate interest in the domain name itself. Furthermore, the offer to sell the domain name cannot be considered noncommercial or fair use. The Respondent is clearly seeking to trade on the Complainant's goodwill and reputation. The Respondent is trying to sell the disputed domain name, both on his own website and through the well-known online auction site, "www.eB". Moreover the Respondent is using the Complainant's trademarks in order to divert Internet users from the Complainant's website by capitalizing on the public recognition of the MARLBORO trademarks (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant's rights in the Complainant's trademark and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademark at the time of the registration of the disputed domain name. The registration of the disputed domain name prevents the Complainant from reflecting its trademarks in a corresponding domain name.
The Respondent has registered the disputed domain name by doing so with full knowledge of the Complainant's rights in the MARLBORO trademarks. The MARLBORO trademark has been in use since 1883 and was registered in the United States of America in 1908, whereas Respondent's disputed domain name was registered, on August 12, 2015. Previous UDRP decisions have stated bad faith in a case the disputed domain name was registered where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL,WIPO Case No. D2014-2264; Philip Morris USA Inc.v.ADN HOSTING, WIPO Case No. D2007-1609). The Respondent's using of the disputed domain name to divert Internet users from the Complainant's official website demonstrates bad faith use under the Policy (Popular Enters.,LLC v. Am. Consumers First et al.,WIPO Case No. D2003-0742). By registering and offering the disputed domain name for sale the Respondent intentionally attempted to attract Internet users to purchase the disputed domain name for commercial gain. Such offering is an indicative of bad faith (Bologna Fiere S.p.A. v. Currentbank- Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars,WIPO Case No.D2004-0830).
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore, finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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, be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Date: April 29, 2016
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