Philip Morris USA Inc. v. Isaac Goldstein
Claim Number: FA1209001464831
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboromiles.com>, registered with Enom423 Incorporated.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 28, 2012.
On September 27, 2012, Enom423 Incorporated confirmed by e-mail to the National Arbitration Forum that the <marlboromiles.com> domain name is registered with Enom423 Incorporated and that Respondent is the current registrant of the name. Enom423 Incorporated has verified that Respondent is bound by the Enom423 Incorporated 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 October 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@marlboromiles.com. Also on October 1, 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 October 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <marlboromiles.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MARLBORO mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous longstanding trademark registrations with the United States Patent and Trademark Office ("USPTO") for the MARLBORO mark (e.g., Reg. No. 68,502 registered Apr. 14, 1908).
Respondent’s <marlboromiles.com> domain name is confusingly similar to the MARLBORO mark because the mark is incorporated in its entirety into the domain name, and only the generic term “miles” and the generic top-level domain (“gTLD”) “.com” have been added. Respondent is not known by the disputed domain name, has never obtained any trademark registrations encompassing the disputed domain name and has never been a licensee of Complainant or received any permission to use the MARLBORO mark. Respondent’s disputed domain name resolves to a website featuring “numerous links to other websites, many of which refer to information on smoking and cigarettes and offers on cigarette purchases,” in competition with Complainant’s own offerings. Respondent’s bad faith registration and use of the disputed domain name is part of a pattern of bad faith registrations and use of domain names incorporating others’ famous marks. Respondent has been involved in eight other UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Wells Fargo & Co. v. Goldstein, FA 1321448 (Nat. Arb. Forum June 9, 2010); see also Zevez, Inc. v. Goldstein, FA 1323005 (Nat. Arb. Forum June 15, 2010); see also Fandango, Inc. v. Goldstein, FA 1333483 (Nat. Arb. Forum Aug. 11, 2010). Respondent is commercially profiting from the confusion it is causing with Complainant’s mark within the domain name through its display of pay-per-clicks to competing cigarette industry websites and products. Respondent’s actual and constructive knowledge of Complainant’s rights in the MARLBORO mark are also proof of Respondent’s bad faith registration of the disputed domain name. The <marlboromiles.com> domain name was registered on April 10, 2012.
Respondent did not submit a Response to these proceedings.
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.”).
Complainant owns numerous longstanding trademark registrations with the USPTO for the MARLBORO mark (e.g., Reg. No. 68,502 registered Apr. 14, 1908). The Panel finds that Complainant’s trademark registrations with the USPTO satisfy Policy ¶ 4(a)(i) regardless of Respondent’s location in Hong Kong. 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 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).
Further, Respondent’s <marlboromiles.com> domain name is confusingly similar to the MARLBORO mark because the mark is incorporated in its entirety into the domain name, and only the generic term “miles” and the gTLD “.com” have been added. The addition of a generic term, which in this case is also descriptive of Complainant’s prior “Marlboro Miles” promotional packages, and a gTLD is not sufficient to remove the disputed domain name from the realm of confusing similarity. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Based upon this precedent, Respondent’s disputed domain name is confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not known by the disputed domain name and has never obtained any trademark registrations encompassing the disputed domain name. Further, Respondent has never been a licensee of Complainant and has not received any permission to use the MARLBORO mark. The WHOIS information identifies the registrant of the <marlboromiles.com> domain name as “Isaac Goldstein,” which the Panel finds to be dissimilar to the disputed domain name. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s disputed domain name resolves to a website featuring “numerous links to other websites, many of which refer to information on smoking and cigarettes and offers on cigarette purchases,” in competition with Complainant’s own offerings. Other, unrelated and changing links also appear on the resolving website. Respondent’s use of the disputed domain name to offer links to competing and unrelated companies does not amount to 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s bad faith registration and use of the disputed domain name is part of a pattern of bad faith registrations and use of domain names incorporating others’ famous marks. Respondent has been involved in eight other UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Wells Fargo & Co. v. Goldstein, FA 1321448 (Nat. Arb. Forum June 9, 2010); see also Zevez, Inc. v. Goldstein, FA 1323005 (Nat. Arb. Forum June 15, 2010); see also Fandango, Inc. v. Goldstein, FA 1333483 (Nat. Arb. Forum Aug. 11, 2010). Respondent’s prior adverse UDRP proceedings are evidence of Respondent’s bad faith registration and use in the instant dispute under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Further, Respondent is commercially profiting from the confusion it is causing with Complainant’s mark within the domain name through its display of pay-per-clicks to competing cigarette industry websites and products. Respondent’s intentional attraction of Internet users to the resolving website from which Respondent presumably profits is evidence of bad faith. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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).”).
Lastly, Respondent’s actual and constructive knowledge of Complainant’s rights in the MARLBORO mark are also proof of Respondent’s bad faith registration of the disputed domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboromiles.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 2, 2012
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