Philip Morris USA Inc. v. chance addison / LCP Inc
Claim Number: FA1308001512812
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is chance addison / LCP Inc (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborosucksballs.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 1, 2013; the National Arbitration Forum received payment August 2, 2013.
On August 2, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborosucksballs.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@marlborosucksballs.com. Also on August 7, 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant contends it has rights in the MARLBORO mark, used in connection
with the sale of cigarettes. Complainant is the owner of registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908). See Complainant’s Exhibit C.
b) Respondent’s <marlborosucksballs.com> domain name is confusingly similar to Complainant’s MARLBORO mark. The disputed domain name includes Complainant’s MARLBORO mark in its entirety, along with the terms “sucks” and “balls.” Further, the disputed domain name includes the generic top level domain (“gTLD”) “.com.”
c) Respondent does not own any rights to or legitimate interests in the <marlborosucksballs.com> domain name.
1) Respondent has never been commonly known by the disputed domain name, and Complainant has not authorized respondent to use its MARLBORO mark in any way.
2) The disputed domain name resolves to a parked page, which displays pay-per-click advertisements from which Complainant presumes Respondent generates click-through revenue. See Complainant’s Exhibit E.
3) Further, the resolving website includes an offer to sell the disputed domain name. See Complainant’s Exhibit E.
d) Respondent registered and is using the disputed domain name in bad faith.
1) Respondent’s general offer to sell the disputed domain name is evidence of bad faith.
2) Respondent is using a confusingly similar domain name to mislead and divert Internet users to the <marlborosucksballs.com> domain name, which displays pay-per-click advertisements from which Respondent presumably receives revenue. See Complainant’s Exhibit E.
3) The <marlborosucksballs.com> domain name resolves to a parked page. See Complainant’s Exhibit E. Thus, Respondent has failed to make any active use of the disputed domain name.
4) Respondent had knowledge of Complainant’s mark at the time the <marlborosucksballs.com> domain name was registered because of Complainant’s long-standing rights in the MARLBORO mark.
5) Respondent registered the <marlborosucksballs.com> domain name in an attempt to tarnish Complainant’s MARLBORO mark.
Respondent did not a file a Response in this proceeding.
a) The Panel notes that Respondent registered the disputed domain name March 20, 2013.
The Panel finds that Complainant has rights to and legitimate interests in its protected mark and the domain name containing that mark in its entirety.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used (or passively held by failing to properly use) 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant contends it has rights in the MARLBORO mark, used in connection with the sale of cigarettes. Complainant states it is the owner of registrations for the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908). See Complainant’s Exhibit C. The Panel finds that Complainant has rights in the MARLBORO mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next alleges that Respondent’s <marlborosucksballs.com> domain name is confusingly similar to Complainant’s MARLBORO mark. Complainant notes that the disputed domain name includes Complainant’s MARLBORO mark in its entirety, along with the terms “sucks” and “balls.” Further, Complainant states that the disputed domain name includes the gTLD “.com.” First, the Panel finds that the addition of generic or descriptive terms does not sufficiently distinguish the disputed domain name from Complainant’s protected mark. 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)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Lastly, the Panel finds that Respondent’s <marlborosucksballs.com> domain name is confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 contends Respondent does not own any rights or legitimate interests in the <marlborosucksballs.com> domain name. Complainant claims Respondent has never been commonly known by the disputed domain name, and Complainant states it has not authorized Respondent to use its MARLBORO mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “chance addison” as the domain name registrant. Past panels have looked to the WHOIS record, whether or not the respondent was authorized to use the trademark, and panels must look to the evidence on record as a whole before determining whether or not a respondent is commonly known by the 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). Therefore, having reviewed the evidence, this Panel finds that because Respondent was not authorized by Complainant to use the MARLBORO mark, and because neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <marlborosucksballs.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that the marlborosucksballs.com> domain name resolves to a parked page, which displays pay-per-click advertisements from which Complainant presumes Respondent generates click-through revenue. See Complainant’s Exhibit E. A disputed domain name that displays hyperlinks unrelated to a complainant’s business is not engaged in a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Therefore, the Panel finds that Respondent’s use of the <marlborosucksballs.com> 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).
Further, Complainant alleges that the resolving website includes an offer to sell the disputed domain name. See Complainant’s Exhibit E. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel found that the respondent’s willingness to sell the disputed domain name suggested that the respondent did not have any rights or legitimate interests in the domain name. Therefore, the Panel finds that Respondent’s offer to sell the <marlborosucksballs.com> domain name is further evidence that Respondent does not have any legitimate rights or interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to nor legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims Respondent registered and is using the disputed domain name in bad faith. Complainant states that Respondent’s general offer to sell the disputed domain name is evidence of bad faith. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that the “[r]espondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i). Therefore, the Panel finds that Respondent’ general offer to sell the <marlborosucksballs.com> domain name supports findings of bad faith pursuant to Policy ¶ 4(b)(i).
Complainant contends that Respondent is using a confusingly similar domain name to mislead and divert Internet users to the <marlborosucksballs.com> domain name, which displays pay-per-click advertisements from which Respondent presumably receives revenue. See Complainant’s Exhibit E. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users for Respondent’s own commercial gain through the use of unrelated pay-per-click hyperlinks also supports findings of bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant claims Respondent had knowledge of Complainant’s mark at the time the <marlborosucksballs.com> domain name was registered because of Complainant’s long-standing rights in the MARLBORO mark. Past panels have found Complainant’s mark to be well known. See, e.g., Philip Morris USA Inc. v. PrivacyProtect.org/ Paundrayana, WIPO Case No. D2012-0660 (May 15, 2012) (noting that Complainant and its MARLBORO cigarettes are “well known worldwide”). While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Lastly, Complainant alleges that Respondent registered the <marlborosucksballs.com> domain name in an attempt to tarnish Complainant’s MARLBORO mark. In Google Inc. v. Java Den Web Solutions, FA 1355351 (Nat. Arb. Forum Mar. 20, 2011), the panel stated that: “tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value.” Further, under similar facts as the case here, the panel in Skullcandy, Inc. v. shane kofoed, FA 1458062 (Nat Arb. Forum Sept. 29, 2012) found that, because the respondent’s <skullcandysucks.com> domain name “merely added the pejorative term ‘sucks’ and the respondent [had] not proven any rights or legitimate interests”, the respondent had registered the disputed domain name in bad faith. Therefore, the Panel here finds that Respondent registered the disputed domain name in an attempt to improperly tarnish Complainant’s mark, which supports findings that Respondent registered the <marlborosucksballs.com> domain name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <marlborosucksballs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 8, 2013.
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