Philip Morris USA Inc. v. Lee Rabidue
Claim Number: FA1908001859317
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Ann K. Ford of DLA Piper LLP (US), District of Columbia, USA. Respondent is Lee Rabidue (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboroheatstick.com> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2019; the Forum received payment on August 26, 2019.
On August 28, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marlboroheatstick.com> Disputed Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Disputed Domain Name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marlboroheatstick.com. Also, on September 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 20, 2019.
On September 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the largest tobacco company in the United States. Complainant has been making premium tobacco products for more than 150 years and has been the leading cigarette manufacturer in the United States for more than 40 years. The MARLBORO brand of cigarettes is Complainant’s top-selling tobacco product and MARLBORO is the number one cigarette brand in all 50 states. Complainant is the owner of the MARLBORO brand and is the owner of numerous MARLBORO trademark registrations in the United States Patent and Trademark Office (the “USPTO”), including MARLBORO, U.S. Reg. No. 5,379,044. The MARLBORO Marks have been in continuous use in commerce in the United States since at least 1883. Complainant has registered several domain names incorporating the MARLBORO Marks, all of which point to a website that contains information about MARLBORO tobacco products.
Complainant is the exclusive licensee in the United States of the HEATSTICKS Mark, which is registered in the USPTO as U.S. Reg. No. 4,758,618. The owner of the HEATSTICKS Mark is Philip Morris Products S.A., a subsidiary of Philip Morris International Inc. Complainant asserts that it is well settled that an exclusive licensee has standing and right to bring a domain name dispute proceeding with respect to a mark for which it enjoys an exclusive license under the Policy 4(a)(i).
The Disputed Domain Name is identical or confusingly similar to Complainant’s Marks as it wholly incorporates Complainant’s MARLBORO and HEATSTICKS Marks, with a minor misspelling of the Marks.
Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the Marks. Respondent’s Disputed Domain Name redirects Internet users to a website of the American Lung Association.
The Respondent registered and is using the Disputed Domain Name in bad faith. Respondent attempted to sell the Disputed Domain Name to Complainant for an amount far in excess of the out-of-pocket costs of the Disputed Domain Name.
B. Respondent
Respondent registered the Domain Name on May 1, 2019, one day after Complainant’s parent company (Altria) and Philip Morris International Inc. issued press releases to announce the regulatory approval of the IQOS product line which encompasses the combined use of Complainant’s MARLBORO and HEATSTICKS Marks
Upon learning that an unauthorized third-party had registered the Disputed Domain Name, Complainant, through its authorized representative, engaged Marksmen to attempt to acquire the Disputed Domain Name. Respondent requested an offer from Marksmen, and Marksmen replied to Respondent with a generous offer. Respondent, nonetheless, declined to sell the Disputed Domain Name to Complainant at the offered price.
Respondent contends that the Disputed Domain Name does not infringe on Complainant’s “copyrights” [sic][i] as it consists of the four separate words “marl,” “boro,” “heat,” and “sticks.”
Respondent argues that it did not act in bad faith as it was not the one who first made the first offer to sell the Disputed Domain Name to Complainant. Rather, Respondent argues that it was contacted via email by Complainant’s representative to determine whether the Disputed Domain Name was available for purchase. Respondent stated that the Disputed Domain Name was for sale and solicited an offer, although Respondent declined Complainant’s offer.
Complainant holds trademark rights in the MARLBORO and HEATSTICKS Marks. The Disputed Domain Name is identical or confusingly similar to Complainant’s MARLBORO and HEATSTICKS Marks. Complainant has established that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant concludes that Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the MARLBORO or HEATSTICK Marks. Complainant has demonstrated that Respondent registered and is using the Disputed Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has shown to have rights in the MARLBORO and HEATSTICKS trademarks (the “MARLBORO and HEATSTICKS Marks”) based upon registration of the Marks with the USPTO (e.g., MARLBORO, U.S. Reg. No. 5,379,044, registered Jan. 16, 2018; HEATSTICKS, U.S. Reg. No. 4,758,618, registered June 23, 2015). Registration of a mark with the USPTO confers a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).[ii]
The Panel also concludes that the <marlboroheatstick.com> Disputed Domain Name is confusingly similar to the MARLBORO and HEATSTICKS Marks under the Policy ¶ 4(a)(i). The Disputed Domain Name incorporates Complainant’s MARLBORO and HEATSTICKS Marks in their entirety, although with a minor misspelling of HEATSTICKS (adding an extra “s”)[iii] and followed by the “.com” generic Top-Level Domain (“gTLD”). The combination of the MARLBORO and HEATSTICKS Marks and addition of a gTLD does not distinguish the mark from the Disputed Domain Name for purposes of the Policy ¶ 4(a)(i). See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.) Likewise, a minor misspelling of a mark, or typosquatting, does not defeat a finding of confusing similarity or identity. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Thus. the Panel concludes that the <marlboroheatstick.com> Disputed Domain Name is confusingly similar to the MARLBORO and HEATSTICKS Marks
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). In this case, the Panel determined that Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name.
Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the MARLBORO and HEATSTICKS Marks. Furthermore, Respondent fails to use the <marlboroheatstick.com> Disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because the Disputed Domain Name redirects Internet users to the website for the American Lung Association. See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use…”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the Disputed Domain Name in bad faith.
First, an offer to sell a Disputed Domain Name in excess of out-of-pocket costs is an indication of bad faith registration and use under the Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Contrary to Respondent’s contention, the Panel finds bad faith regardless of the fact that Complainant made the first offer. See Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012) (finding that the respondent’s offer to sell the disputed domain name to the complainant is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), even though Complainant made the first offer).
Second, Respondent registered the Disputed Domain Name in bad faith as the Disputed Domain Name contained a misspelling of Complainant’s HEATSTICKS Mark, adding an extra “s”. Respondent’s use of typosquatting in the Disputed Domain Name implies bad faith under the Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, the Panel finds that the Respondent knew or should have known of Complainant’s rights in its MARLBORO and HEATSTICKS Marks when registering the Disputed Domain Name. As noted above, the Complainant’s Marks are widely known, and the Respondent registered the Disputed Domain Name many years after the Complainant first obtained its numerous trademark registrations for the MARLBORO and HEATSTICKS Marks. It therefore strains credulity to believe that Respondent had not known of the Complainant or its MARLBORO and HEATSTICKS Marks when registering the Disputed Domain Name, especially since the Disputed Domain Name is a combination of Complainant’s aforementioned trademarks. Thus, as here, prior knowledge of a complainant’s trademarks prior to registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the MARLBORO and HEATSTICKS Marks prior to registering the Disputed Domain Name, thus constituting bad faith under the Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboroheatstick.com> Disputed Domain Name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: October 1, 2019
[i] Respondent misused the word “copyrights”; the correct word should have been “trademarks”.
[ii] The HEATSTICKS Mark is registered to Philip Morris Products S.A., which is a wholly owned subsidiary of Philip Morris International. Philip Morris International granted a license of the HEATSTICKS Mark in the United States to Complainant, which establishes rights in the HEATSTICKS Mark under the Policy ¶ 4(a)(i). See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624, (a licensee to a trademark has established rights in that mark). Furthermore, a subsidiary relationship can sufficiently confer trademark rights between a subsidiary and parent company. See Provide Commerce, Inc v Amador Holdings Corp / Alex Arrocha, FA 1529347 (Forum Jan. 3, 2014) (finding that the complainant shared rights in a mark through its subsidiary relationship with the trademark holder).
[iii] This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark.
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