national arbitration forum

 

DECISION

 

Philip Morris USA Inc. v. John Doe as Holder of Domain Name <marlborogreen.com>

Claim Number: FA1203001436198

 

PARTIES

Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA.  Respondent is John Doe as Holder of Domain Name <marlborogreen.com> (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marlborogreen.com>, registered with Network Solutions, LLC.

 

PANEL

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

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2012; the National Arbitration Forum received payment on March 26, 2012.

 

On March 27, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborogreen.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2012 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@marlborogreen.com.  Also on March 28, 2012, 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.

 

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

 

On April 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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

    1. Respondent is a victim of identity theft and Respondent’s identity should be redacted in this case.
    2. Complainant manufactures, markets, and sells cigarettes under its MARLBORO mark.
    3. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MARLBORO mark (e.g., Reg. No. 68,502 registered April 14, 1908).
    4. Respondent’s <marlborogreen.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
    5. Respondent is not known by any name or trade name that incorporates Complainant’s MARLBORO mark.
    6. Respondent uses the <marlborogreen.com> domain name to host sponsored hyperlinks that resolve to websites offering smoking-related products for sale.
    7. As Respondent is a victim of identity theft, Respondent cannot own rights or legitimate interests in the disputed domain name and the actual registrant of the disputed domain name is guilty of bad faith registration and use.
    8. Respondent registered the disputed domain name because Respondent knew Internet users would become confused as to Complainant’s affiliation with the disputed domain name, from which Respondent could attempt to commercially benefit.
    9. Respondent had actual and constructive knowledge of Complainant’s rights in the MARLBORO mark.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Philip Morris USA Inc., manufactures, markets, and sells cigarettes under its MARLBORO mark. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MARLBORO mark (e.g., Reg. No. 68,502 registered April 14, 1908).

 

Respondent registered the domain name on May 20, 2002. Respondent uses the <marlborogreen.com> domain name to host sponsored hyperlinks that resolve to websites offering smoking-related products for sale.

 

DISCUSSION

 

Preliminary Issue:  Redaction of Respondent’s Identity

Complainant contends that Respondent has been the victim of identity theft.  Complainant alleges that Complainant attempted to contact Respondent at the address listed in the WHOIS information.  Complainant claims that Respondent’s parents received Complainant’s communications and stated that Respondent did not register the disputed domain name and is currently in Cambodia.  Complainant provides further communication between Respondent and Complainant, in which Respondent states the following:

1. I am not the registrant of marlborogreen.com domain name

2. Someone falsely is using my name and contact information to register marlborogreen.com

            3. I believe this is a case of identity theft

The Panel finds Respondent is a victim of identity theft.  The Panel has redacted Respondent’s personal information from the decision to prevent the further victimization of Respondent.  See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004), and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005)(the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents).  See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). 

 

General

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 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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges rights in its MARLBORO mark by virtue of its long use of the mark and its trademark registrations with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908).  The Panel finds that Complainant owns rights in its MARLBORO mark pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that Respondent’s <marlborogreen.com> domain name is confusingly similar to Complainant’s MARLBORO mark.  The disputed domain name combines Complainant’s MARLBORO mark with the generic term “green” and the generic top-level domain (“gTLD”) “.com.”  As that the additions of a generic term and a gTLD fail to adequately distinguish the disputed domain name from Complainant’s mark, the Panel finds that Respondent’s <marlborogreen.com> domain name is confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not known by any version of Complainant’s MARLBORO mark.  Complainant claims that Respondent is not connected or affiliated with Complainant or any of Complainant’s affiliates. The Panel finds that Respondent is not commonly known by the <marlborogreen.com> domain name for the purposes of Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 claims that Respondent uses the <marlborogreen.com> domain name to host sponsored hyperlinks that resolve to a website selling smoking-related products which compete with Complainant’s cigarette products.  The Panel finds that Respondent’s hosting of competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Furthermore, as the named Respondent in this case is a victim of identity theft, Respondent does not own rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and uses the <marlborogreen.com> domain name in bad faith because Respondent is attempting to commercially benefit from Internet user confusion.  Complainant contends that Respondent registered the confusingly similar disputed domain name because Respondent knew Internet users would become confused as to Complainant’s affiliation with the disputed domain name.  Complainant claims that Respondent receives click-through fees and, therefore, Respondent commercially benefits from Internet user confusion.  The Panel finds that Respondent registered and uses the <marlborogreen.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

As the named Respondent is a victim of identity theft, the identity theft is evidence that the actual registrant of the <marlborogreen.com> domain name registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  Therefore, the Panel finds that Respondent registered and uses the <marlborogreen.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 4, 2012

 

 

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