Philip Morris USA Inc. v. Donald Broussard
Claim Number: FA1308001516210
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Donald Broussard (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com>, registered with GODADDY.COM, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2013; the National Arbitration Forum received payment on August 23, 2013.
On August 30, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 September 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@marlborovapor.com, postmaster@marlborovaper.com, postmaster@marlborojuice.com, and postmaster@marlboroejuice.com. Also on September 3, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant
a) Complainant contends it has rights in the MARLBORO mark, used in connection with the sale of cigarettes. Complainant owns registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908).
b) Respondent’s <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names are confusingly similar to Complainant’s MARLBORO mark. The disputed domain names each contain Complainant’s mark in its entirety and include one of the following generic or descriptive terms: “vapor,” “vaper,” “juice” or “ejuice.” All of these terms are common references alluding to the vapor or liquid used in connection with electronic cigarettes. Further, the disputed domain names each include the generic top-level domain (“gTLD”) “.com.”
c) Respondent does not have any rights or legitimate interests in the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way
b. Each of the disputed domain names resolves to a parked, directory website.
d) Respondent registered and is using the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names in bad faith.
a. Respondent’s registration of multiple domain names in this case, each incorporating Complainant’s MARLBORO mark in its entirety constitutes bad faith.
b. The <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names create initial interest confusion, which attracts Internet users to the disputed domain names. Further, Respondent is using the disputed domain names to display pay per click advertisements for Respondent’s own commercial gain.
c. Respondent had knowledge of Complainant’s mark prior to registering the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names because of the fame of Complainant’s mark and Respondent’s use of the terms “vapor,” “vaper,” “juice,” and “ejuice,” which all refer to the liquid used in connection with electronic cigarettes.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the MARLBORO mark, used in connection with the sale of cigarettes. Complainant owns registrations for the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908). Therefore, the Panel finds that Complainant has rights in the MARLBORO mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant contends that Respondent’s <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names are confusingly similar to Complainant’s MARLBORO mark. Complainant asserts that the disputed domain names each contain Complainant’s mark in its entirety and include one of the following descriptive terms: “vapor,” “vaper,” “juice” or “ejuice.” Complainant explains that all of these terms are common references alluding to the vapor or liquid used in connection with electronic cigarettes. Further, Complainant notes that the disputed domain names each include the gTLD “.com.” The Panel finds that the addition of a descriptive term to a complainant’s trademark does not sufficiently distinguish a disputed domain name from the trademark. 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)). The Panel finds that the addition of a gTLD does is not relevent for the purposes of Policy ¶ 4(a)(i) analysis. See 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.”). Therefore, the Panel finds that Respondent’s <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent does not have any rights or legitimate interests in the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS record for each of the disputed domain names lists “Donald Broussard” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record in determining whether the 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, because Respondent was not authorized by Complainant to use the MARLBORO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, or <marlboroejuice.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant claims that each of the disputed domain names resolves to a parked, directory website. Past panels have found that disputed domain names that resolved to parked pages featuring third-party links unrelated to Complainant do not constitute 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 disputed domain names to operate parked directory sites featuring third-party links unrelated to Complainant 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(a)(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names in bad faith. Complainant asserts that Respondent’s registration of multiple domain names in this case, each incorporating Complainant’s MARLBORO mark in its entirety constitutes bad faith. In past disputes, where respondent had registered multiple domain names incorporating the complainant’s mark, panels have found this conduct to constitute bad faith registration and use under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Therefore, the Panel finds that Respondent’s registration of the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names established a bad faith pattern pursuant to Policy ¶ 4(b)(ii).
Complainant claims that the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names create initial interest confusion, which misleads and attracts Internet users to the disputed domain names for Respondent’s commercial gain. Further, Complainant alleges that Respondent uses the disputed domain names to display pay-per-click advertisements for Respondent’s own commercial gain. In Lorillard Licensing Co., LLC v. Zhang Yangduo / Yangduo Zhang, FA 1486858 (Nat. Arb. Forum April 19, 2013), the panel held that initial interest confusion supports a finding of bad faith. Past panels have also found that the use of a trademark connected with a well-known product demonstrates bad faith. Additionally, panels have found that using a disputed domain name to create a likelihood of confusion that attracts Internet users for commercial gain constitutes bad faith under Policy ¶ 4(a)(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).”). Therefore, the Panel finds that Respondent’s <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names creates a likelihood of confusion with Complainant’s MARLBORO mark that is connected with a well-known product from which Respondent is obtaining commercial gain, and therefore Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had knowledge of Complainant’s mark prior to registering the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names because of the fame of Complainant’s mark and Respondent’s use of the terms “vapor,” “vaper,” “juice,” and “ejuice,” which all refer to the liquid used in connection with electronic cigarettes. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <marlborovapor.com>, <marlborovaper.com>, <marlborojuice.com>, and <marlboroejuice.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 7, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page