national arbitration forum

 

DECISION

 

Philip Morris USA Inc. v. Li Xiaodong

Claim Number: FA1106001394973

 

PARTIES

Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA.  Respondent is li xiaodong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marlboroskyline.us>, registered with UK2 GROUP LTD.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2011.

 

On June 22, 2011, UK2 GROUP LTD. confirmed by e-mail to the National Arbitration Forum that the <marlboroskyline.us> domain name is registered with UK2 GROUP LTD. and that Respondent is the current registrant of the name.  UK2 GROUP LTD. has verified that Respondent is bound by the UK2 GROUP LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 27, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <marlboroskyline.us> domain name is confusingly similar to Complainant’s MARLBORO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <marlboroskyline.us> domain name.

 

3.    Respondent registered and used the <marlboroskyline.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Philip Morris USA Inc., owns the MARLBORO mark which it uses in connection with its sale of cigarettes. Complainant owns a registration for its trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 68,502 registered April 14, 1908). Complainant additionally has registered its SKYLINE mark with the USPTO (Reg. No. 1,709,481 registered August 18, 1992).

 

Respondent, Li Xiaodong, registered the <marlboroskyline.us> domain name on January 12, 2011. The disputed domain name resolves to a website which offers bulk sales of cigarette products bearing Complainant’s marks.

 

DISCUSSION

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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 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 domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the MARLBORO mark. Registration of a mark with a federal trademark authority is sufficient to establish rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Additionally, the mark need not be registered in the country in which a respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has provided evidence of registration of the MARLBORO mark with the USPTO (Reg. No. 68,502 registered April 14, 1908) and of the SKYLINE mark also with the USPTO (Reg. No. 1,709,481 registered August 18, 1992). As such, the Panel finds that Complainant has rights in the MARLBORO and SKYLINE marks pursuant to Policy ¶ 4(a)(i).

 

A disputed domain name may not be confusingly similar to a registered trademark. The addition of a county-code top-level domain (“ccTLD”) does not distinguish a domain name from a mark. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Additionally, the combination of two of a complainant’s marks does not alleviate confusion—rather, it increases it. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Respondent has fully incorporated Complainant’s MARLBORO mark and followed it with Complainant’s SKYLINE mark and the ccTLD “.us.” Thus, the Panel finds that the <marlboroskyline.us> domain name is confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <marlboroskyline.us> domain name and has made a prima facie case in support of this allegation. Once a complainant makes a prima facie case against a respondent, the burden shifts to the respondent to provide evidence to contradict the complainant’s claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel may infer that Complainant’s allegations are correct as a result of Respondent’s failure to submit a response to the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will review the record to determine if Respondent does maintain any rights or legitimate interests in the disputed domain name. 

 

Where there is no evidence that a respondent had trademarks or service marks similar to the disputed domain name, a panel may infer that a respondent does not have rights or legitimate interests under Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). Nothing in the records suggests that Respondent has trademarks or service marks reflecting the <marlboroskyline.us> domain name. The Panel thus finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(i).

 

Complainant contends that Respondent is not, and has never been, commonly known by the <marlboroskyline.us> domain name. Where the WHOIS information for a domain name and the other information on the record do not suggest so, a respondent is not commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Complainant has not licensed Respondent to use the MARLBORO marks. Additionally, the WHOIS information for the <marlboroskyline.us> domain name lists “Li Xiaodong” as the domain name registrant. Finding no information suggesting that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the <marlboroskyline.us> domain name under Policy ¶ 4(c)(iii).

 

The disputed domain name resolves to a website which offers bulk sales of cigarette products bearing Complainant’s marks. The Panel finds that this use of the disputed domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).

 

The Panel finds Policy ¶ 4(a)(ii) met.

 

Registration or Use in Bad Faith

 

A respondent may not use a domain name in a way which disrupts a complainant’s business. The sale of a complainant’s products on a disputed domain name’s resolving website does disrupt a complainant’s business. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Respondent’s confusingly similar <marlboroskyline.us> domain name resolves to a website that makes unauthorized sales of Complainant’s products. Therefore, Internet users finding Respondent’s website rather than Complainant’s, due to the confusingly similar domain name, may purchase Complainant’s products through Respondent, an unauthorized vendor, rather than through Complainant. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, which is evidence of both bad faith registration and use under Policy ¶ 4(b)(iii).

 

The Panel infers that Respondent commercially gains from the sale of Complainant’s goods through its <marlboroskyline.us> domain name. The Panel also infers that this profitability led Respondent to register a confusingly similar domain name so as to make Internet users uncertain as to Complainant’s association with Respondent. The Panel thus finds that Respondent’s use of the disputed domain name demonstrates bad faith under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON] products, Respondents have shown bad faith in use of the Domain Name.”).

 

The Panel finds that Policy ¶ 4(a)(iii) is met.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marlboroskyline.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  July 25, 2011

 

 

 

 

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