Philip Morris USA Inc. v. Yuki Sugata / Amc
Claim Number: FA1309001517950
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Yuki Sugata / Amc (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapmarlborocigarette.com>, registered with GMO Internet, Inc. d/b/a onamae.com.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 5, 2013. The Complaint was submitted in both Japanese and English.
On September 5, 2013, GMO Internet, Inc. d/b/a onamae.com confirmed by e-mail to the National Arbitration Forum that the <cheapmarlborocigarette.com> domain name is registered with GMO Internet, Inc. d/b/a onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a onamae.com 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 17, 2013, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of October 7, 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@cheapmarlborocigarette.com. Also on September 17, 2013, the Japanese 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 October 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings is conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
Complainant owns the registered MARLBORO marks, and manufactures, markets, and sells cigarettes under that mark. Complainant’s MARLBORO brand began in 1955 and has been used since that time in connection with tobacco and smoking-related products. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908). Complainant has spent substantial time, effort, and money advertising and promoting the mark in the United States, and its efforts have resulted in a distinctive and unique association between Complainant’s products and the MARLBORO mark. Complainant also owns the registration for the <marlboro.com> domain name, which enables “age-verified adult smokers 21 years of age or older” to access information on Complainant’s products, as well as special offers.
Respondent registered the <cheapmarlborocigarette.com> domain name, which is confusingly similar to Complainant’s MARLBORO marks. The website connected with the domain name displays an error message, which shows that the domain name is not put to an active use. Respondent has no rights or legitimate interests in the <cheapmarlborocigarette.com> domain name, and was never known by any name or trade name that incorporates the world MARLBORO. Respondent has never sought or obtained trademark registrations for the words upon which the domain name is based, and could never do so, as the MARLBORO marks belong exclusively to Complainant. Respondent’s failure to use the disputed domain name provides further evidence of its lack of rights or legitimate interests in the <cheapmarlborocigarette.com> domain name. Respondent’s bad faith registration and use is shown by its failure to make any use of the domain name and by its actual awareness of the MARLBORO mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on March 11, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 claims that it has rights in the MARLBORO mark, based on its USPTO registration (e.g., Reg. No. 68,502 registered April 14, 1908). The panel in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), found that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Further, the panel in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), stated that the complainant’s trademark registration was valid regarless of which country the respondent resided in. The Panel agrees on both accounts, determining that Complainant has properly demonstrated its rights in the MARLBORO mark under Policy ¶ 4(a)(i) via its USPTO registration, and its rights in the mark prevail despite Respondent’s residence in Japan.
Complainant contends that the <cheapmarlborocigarette.com> domain name is confusingly similar to Complainant’s MARLBORO mark, pointing out that the disputed domain name includes the generic and descriptive wording “cheap” and “cigarette,” and argues that such terms do not alleviate confusion. The Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding generic and descriptive terms and a gTLD do not adequately distinguish the domain name from the mark, resulting in confusing similarity for the purposes of Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
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 alleges that Respondent was never known by any name or trade name that incorporates the word MARLBORO, nor has it sought or obtained trademark registrations for the words that make up the <cheapmarlborocigarette.com> domain name. Complainant claims that Respondent could not attempt to obtain trademark registrations because Complainant exclusively owns the MARLBORO mark and many variations thereof. Previous panels have concluded that a respondent is not typically known by the disputed domain name when the evidence indicates that the respondent has no formal rights in the mark upon which the domain name is based. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel notes that the WHOIS information identifies “Yuki Sugata / Amc” as the domain name’s registrant, and finds that the WHOIS information provides persuasive evidence of Respondent’s lack of rights or legitimate interests in a disputed domain name. 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). The Panel therefore determines that without rights in the mark, permission to use the mark, or evidence in the WHOIS information demonstrating a relationship with the domain name, Respondent could not be considered to be commonly known by the <cheapmarlborocigarette.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent makes no active use of the <cheapmarlborocigarette.com> domain name, claiming that the domain resolves to a website with no content. The panel in Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), held that the respondent’s non-use of the disputed domain names show that the respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. The Panel agrees with Complainant in the present dispute, and finds that due to Respondent’s failure to establish an active website, Respondent does not use the domain name in a manner demonstrating a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, and thus lacks rights or legitimate interests in the disputed domain name.
The Panel notes that while Complainant does not allege that any of Respondent’s activities with regard to the <cheapmarlborocigarette.com> domain name fall under those enumerated in Policy ¶ 4(b), Respondent is still found to have registered and used the domain name in bad faith for independent reasons. The Panel agrees with previous findings which have established that Policy ¶ 4(b) is not an exclusive list of bad faith conduct; rather, other factors may be found to contribute to a finding of bad faith under Policy ¶ 4(a)(iii). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant argues that Respondent’s bad faith can be found through its failure to make any active use of the <cheapmarlborocigarette.com> domain name. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel held that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. The Panel finds that the same holds true in the present dispute, and concludes that Respondent’s bad faith registration of the <cheapmarlborocigarette.com> domain name is shown by the fact that no content is associated with the webpage resolving from the domain.
Finally, Complainant claims that Respondent fully incorporates Complainant’s famous MARLBORO mark in the <cheapmarlborocigarette.com> domain name, and charges Respondent with knowledge of Complainant’s mark at the time it registered the domain name. Complainant asserts that the use of the term “cigarettes,” in conjunction with the MARLBORO mark, confirms that Respondent must have known about Complainant’s rights in the mark. The Panel agrees, and determines that due to Respondent’s actual knowledge of Complainant’s rights in the MARLBORO mark at the time the domain name was registered, Respondent’s registration of the <cheapmarlborocigarette.com> domain name must have been in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <cheapmarlborocigarette.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 15, 2013
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