Philip Morris USA Inc. v. Darren Waggott / Kingfisher Computers
Claim Number: FA1307001511301
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Darren Waggott / Kingfisher Computers (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborovape.com>, registered with 1 & 1 Internet AG.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 25, 2013.
On July 25, 2013, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <marlborovape.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 July 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2013 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@marlborovape.com. Also on July 29, 2013, 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 August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant manufactures, markets, and sells cigarettes in the United States under its MARLBORO mark. Complainant markets its famous MARLBORO cigarettes to adult smokers in various promotional materials, including on paper media and online at its official website at <marlboro.com>.
2. Complainant owns trademark registrations for the MARLBORO mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908). Complainant spends substantial resources to promote and advertise its MARLBORO mark, such that the mark has become famous.
3. Respondent registered the <marlborovape.com> domain name, and uses the domain to resolve to an Internet directory website. The <marlborovape.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
4. Respondent fails to demonstrate rights or legitimate interests in the disputed domain name, as it has never been known by any name that incorporates the MARLBORO mark, nor does it have permission from Complainant to register a domain name containing the mark.
5. Further, Respondent operates a directory website in connection with the domain name, displaying links to third-party websites. Respondent demonstrates bad faith registration and use of the domain name by its pattern of registering domain names incorporating the marks of third parties, by failing to make active use of the resolving website beyond hosting a directory website, and by registering a confusingly similar domain name with full knowledge of Complainant’s rights in the MARLBORO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARLBORO mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <marlborovape.com> domain name, and that Respondent registered and uses the 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 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 asserts rights in its MARLBORO mark, providing evidence of its longstanding ownership of the mark’s registration with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908). Respondent’s USPTO registration is adequate evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Although Respondent resides in the United Kingdom, Complainant’s rights in the MARLBORO mark are nonetheless valid under Policy ¶ 4(a)(i) as a result of Complainant’s USPTO registration. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant makes the allegation that the <marlborovape.com> domain name is confusingly similar to Complainant’s MARLBORO mark, contending that the domain name includes the MARLBORO mark in its entirety, adding the term “vape.” Complainant explains “vape” to be a reference to the “vapor” emanating from electronic cigarettes. Adding a generic or descriptive term to a mark does not adequately distinguish the domain name from the mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant also considers the addition of the generic top-level domain (“gTLD”) “.com” to be insufficient to alleviate confusion. A gTLD does not alleviate confusing similarity between a domain name and a mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel concludes that adding a descriptive term and a gTLD to the mark results in confusing similarity between the <marlborovape.com> domain name and the MARLBORO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant sets forth the assertion that Respondent cannot be considered commonly known by the <marlborovape.com> domain name, and supports its argument with the claim that Respondent has no connection with the mark, has never obtained a trademark registration for the MARLBORO mark, and does not have permission from Complainant to use the mark. Complainant’s contentions, which are uncontradicted, support a finding that Respondent cannot be commonly known by the disputed domain name, as intended by 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 that it is commonly known by the domain name).
Complainant argues that Respondent uses the <marlborovape.com> domain name to operate an Internet directory website. Complainant has provided evidence that shows a screen shot of the resolving website, which includes a variety of hyperlinks to unrelated third-party entities, including “Georgetown Moving Company,” “Fly Virgin America,” and “Capitol Process Servers.” Respondent’s use of the disputed domain name to display unrelated hyperlinks fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii), respectively. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s bad faith registration and use is shown by Respondent’s failure to make an active use of the disputed domain name. Complainant alleges that Respondent misappropriates the MARLBORO mark to create confusion. The Panel infers that the hyperlinks displayed on Respondent’s website result in a commercial profit to Respondent for each time a website visitor clicks on a link. Furthermore, although a webpage featuring hyperlinks unrelated to Complainant is not typically considered an inactive use of the domain name, Respondent’s registration and use of the domain name is nonetheless in bad faith pursuant to Policy ¶ 4(b)(iv) because Internet users are likely to be confused by the domain name’s relationship with Complainant, and Respondent profits from the confusion. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant contends that by incorporating the MARLBORO mark in its entirety within the disputed domain name, Respondent demonstrates that it was aware of Complainant’s rights in the mark. The Panel agrees, and finds that by using Complainant’s mark in the domain name, Respondent had actual knowledge of Complainant’s rights in the MARLBORO mark, and thus registered the <marlborovape.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborovape.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 6, 2013
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