Philip Morris USA Inc. v. Mamouni Abdellah
Claim Number: FA1308001516667
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Mamouni Abdellah (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net>, registered with OVH sas.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2013; the National Arbitration Forum received payment on August 27, 2013. The Complaint was submitted in both English and French.
On August 27, 2013, OVH sas confirmed by e-mail to the National Arbitration Forum that the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names are registered with OVH sas and that Respondent is the current registrant of the names. OVH sas has verified that Respondent is bound by the OVH sas 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 4, 2013, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of September 24, 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@ecigarette-marlboro.com, postmaster@ecig-marlboro.com, postmaster@e-cigarette-marlboro.com, and postmaster@cigarette-electronique-marlboro.net. Also on September 4, 2013, the French language 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 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
a. Complainant, Philip Morris USA Inc., manufactures, markets, and sells cigarettes in the United States under its famous MARLBORO trademarks.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MARLBORO mark (e.g., Reg. No. 68,502, registered April 14, 1908).
c. The infringing domain names are confusingly similar to Complainant’s MARLBORO trademarks. Respondent’s addition of the generic terms “ecigarette,” “electronic,” “e-cig,” and “cigarette-electronique,” to MARLBORO within the other infringing domain names is likely to exacerbate confusion between Complainant and its products and the infringing domain names. Further, the addition of generic top-level domains (“gTLD”) such as “.com” or “.net” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
d. Respondent has no legitimate interests or rights in the infringing domain names.
i. Respondent was never known by any name or trade name that incorporates the word MARLBORO.
ii. The infringing domain names resolve to a website located at <https://ss10.ovh.net/fr/>.
e. Respondent has registered and is using the infringing domain names in bad faith.
i. Respondent’s pattern of conduct—registering four domain names incorporating the exact MARLBORO mark—also demonstrates Respondent’s bad faith use of the infringing domain names.
ii. Respondent’s registration and use of the infringing domain names attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO trademarks.
iii. Respondent has registered the infringing domain names in bad faith by doing so with full knowledge of Complainant’s rights in the MARLBORO trademarks.
f. Respondent has not submitted a Response to this case.
g. Respondent registered the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names on May 3, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris USA Inc., of Richmond, VA, USA, is the owner of USA registrations for the MARLBORO trademark which it has used continuously since at least as early as 1908 in association with the manufacturing, marketing and selling of cigarettes. Complainant also owns the <marlboro.com> website which is utilized to provide additional information and special offers related to its products.
Respondent is Mamouni Abdellah of Maisons Alfort, France. Respondent’s registrar’s address is indicated as Roubaix, France. Respondent registered the disputed domain names on or about May 2, 2013. Respondent failed to submit responsive pleadings in this case but did send an email in which he alluded to reserving the names for future ecigarette marketing and a willingness to remove the disputed domain names.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in French, thereby making the language of the proceedings in French. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 alleges that it manufactures, markets, and sells cigarettes in the United States under its famous MARLBORO trademarks. Complainant claims that it is the owner of trademark registrations with the USPTO for the MARLBORO mark (e.g., Reg. No. 68,502, registered April 14, 1908). See Annex C. The Panel notes that Respondent appears to reside and operate in France. However, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides and operates, so long as it establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the MARLBORO mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names are confusingly similar to Complainant’s MARLBORO trademarks. Complainant argues that Respondent’s addition of the generic terms “ecigarette,” “ecig,” “e-cigarette,” and “cigarette-electronique,” to “MARLBORO” within the other infringing domain names is likely to exacerbate confusion between Complainant and its products and the infringing domain names. The Panel notes that some of Respondent’s disputed domain names include hyphens. The Panel finds that Respondent’s addition of a generic term or hyphen to Complainant’s MARLBORO mark does not distinguish its domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").
Further, Complainant argues that the addition of gTLDs such as “.com” or “.net” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. The Panel finds that Respondent’s inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that Respondent’s <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent was never known by any name or trade name that incorporates the MARLBORO mark. Complainant argues that Respondent has no connection or affiliation with Complainant, or any of the many products provided by Complainant under the MARLBORO trademarks. Complainant asserts that Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof, and could never do so given Complainant’s pre-existing and exclusive rights to this mark throughout the United States. Complainant claims that Respondent has not received any license, authorization, or consent—express or implied—to use the MARLBORO trademarks in a domain name or in any other manner. The Panel finds that Respondent is not and has not been commonly known by the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names resolve to a website located at <https://ss10.ovh.net/fr/>. Complainant contends the infringing website states a message, which translated into English, reads “Choose your preferred interface.” See Annex E. Complainant claims the infringing website also provides links to allow Internet users to access third-party e-mail services. Id. Prior panels have held that a respondent’s unrelated use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names to resolve to an unrelated website is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s pattern of conduct—registering four domain names incorporating the exact MARLBORO mark—also demonstrates Respondent’s bad faith use of the infringing domain names. The Panel notes that Respondent registered the following four domain names incorporating Complainant’s MARLBORO marks: <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net>. In YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001), the panel held that a bad faith pattern existed pursuant to Policy ¶ 4(b)(ii) as a result of the respondent's registration of two domain names incorporating the complainant's YAHOO! mark. The Panel finds that Respondent’s registration of four domain names in the current case demonstrates a pattern of bad faith registration of domain names under Policy ¶ 4(b)(ii).
Complainant claims that Respondent’s registration and use of the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO trademarks. Complainant contends that Respondent used the MARLBORO trademarks to lure adult smokers to its own infringing websites. Prior panels have held that a respondent’s use of a complainant’s mark in a domain name to attract Internet users to its website demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website). The Panel finds that Respondent’s use of the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names shows bad faith use and registration under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ecigarette-marlboro.com>, <ecig-marlboro.com>, <e-cigarette-marlboro.com>, and <cigarette-electronique-marlboro.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 10, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page