Philip Morris USA Inc. v. Scott Dunning
Claim Number: FA1309001518666
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Scott Dunning (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborosgreen.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborosgreen.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@marlborosgreen.com. Also on September 10, 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.
A timely Response was received and determined to be complete on September 16, 2013.
On September 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant:
a) Complainant has exclusive rights in the MARLBORO mark.
i. Complainant manufactures, markets, and sells cigarettes in connection with the MARLBORO mark. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the MARLBORO mark (Reg. No. 68,502 registered Apr. 14, 1908).
b) The <marlborosgreen.com> domain name is confusingly similar to the MARLBORO mark.
i. Respondent’s addition of the generic term “green” to the MARLBORO mark within the domain name does not eliminate this confusion. Further, the addition of a generic top-level domain (“gTLD”) such as “.com” does not create a distinction between the disputed domain name and the MARLBORO mark.
c) Respondent has no rights or legitimate interests with respect to the <marlborosgreen.com> domain name.
i. Respondent was never known by any trade name that incorporates the word “marlboro,” and Respondent has no connection or affiliation with Complainant. Respondent has never sought or obtained any trademark registrations reflecting the disputed domain name, and Respondent has not received any license, authorization, or consent to use the MARLBORO mark.
ii. Respondent capitalizes on its association with Complainant’s mark and seeks to divert Internet users who would otherwise visit Complainant’s legitimate website, and fails to give rise to a legitimate interest in the domain name.
d) Respondent registered and is using the <marlborosgreen.com> domain name in bad faith.
i. The disputed domain name resolves to an inactive website.
ii. Respondent’s objective, in registering the <marlborosgreen.com> domain name, was to divert Internet users seeking to visit Complainant’s legitimate website. Respondent chose this particular domain name in an attempt to draw Internet users to his website by capitalizing on the association of the MARLBORO mark. As Complainant’s mark is distinctive, no one would legitimately choose to use the mark without seeking to create an impression of an association with Complainant.
iii. The <marlborosgreen.com> domain name creates initial interest confusion which attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO mark.
iv. Respondent registered the <marlborosgreen.com> domain name with full knowledge of Complainant’s rights in the MARLBORO mark. Not only does Complainant own registrations for the mark, but a simple Internet search would reveal Complainant’s extensive use of the MARLBORO mark.
B. Respondent:
a) Although the <marlborosgreen.com> domain name is currently not in use, Respondent intends to one day use the domain name. Respondent is currently working on another website, and thus has no demonstrable preparations to provide the Panel.
b) Marlboro has a meaning and it has nothing to do with cigarettes. Marlboro is a popular pastry/cake that is a twisted, usually iced, cruller combining strands of plain and chocolate dough. Additionally, Marlboro is the name of several cities across the world.
c) Complainant has no green-branded products, either stylistically or environmentally green.
d) Complainant’s attempt to forcibly take the <marlborosgreen.com> domain name from Respondent is analogous to Respondent registering the domain <chocolatetaco.com> and having Taco Bell filing a complaint to have the domain name transferred.
e) The <marlborosgreen.com> domain name has nothing to do with cigarettes or the Marlboro brand.
f) Since the domain Respondent registered has nothing to do with cigarettes or the Marlboro brand, Complainant is welcomed by Repsondent to make an offer for it.
1 - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
2 - The Respondent has no rights or legitimate interests in respect of the domain name.
3 - The Respondent registered and is using 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.
Complainant contends that it has exclusive rights in the MARLBORO mark. Complainant claims that it manufactures, markets, and sells cigarettes in connection with the MARLBORO mark. Complainant notes that it is the owner of the USPTO registration for the MARLBORO mark (Reg. No. 68,502 registered Apr. 14, 1908). The registration of the mark with the USPTO is evidence of Complainant having acquired rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the MARLBORO mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <marlborosgreen.com> domain name is confusingly similar to the MARLBORO mark. Complainant argues that Respondent’s addition of the generic term “green” to the MARLBORO mark within the domain name does not eliminate this confusion. Further, Complainant argues that the addition of a gTLD such as “.com” does not create a distinction between the disputed domain name and the MARLBORO mark. The Panel notes that the domain name includes the letter “s” following Complainant’s mark, but determines that adding the letter "s" to the domain name does not distinguish the domain name from the mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the addition of a generic term and gTLD are not enough to negate the confusing similarity between the <marlborosgreen.com> domain name and the MARLBORO mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark).
While Respondent contends that the <marlborosgreen.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then 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 argues that Respondent has no rights or legitimate interests with respect to the <marlborosgreen.com> domain name. Complainant claims that Respondent was never known by any trade name that incorporates the word “marlboro,” and Respondent has no connection or affiliation with Complainant. According to Complainant, Respondent has never sought or obtained any trademark registrations reflecting the disputed domain name, and Respondent has not received any license, authorization, or consent to use the MARLBORO mark. The Panel also notes that the WHOIS record for the <marlborosgreen.com> domain name lists “Scott Dunning” as the domain name registrant. Accordingly, the information on record supports a finding that Respondent is not commonly known by the <marlborosgreen.com> domain name under Policy ¶ 4(c)(ii). 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).
Complainant notes that the <marlborosgreen.com> domain name resolves to an inactive website. However, the Panel has reviewed the annexes that Complainant has submitted and notes that the screenshot provided of the <marlborosgreen.com> domain name’s resolving website demonstrates that it is filled with links unrelated to Complainant’s business. See Complainant’s Annex E. Further, Complainant claims that Respondent appropriates the MARLBORO mark for the purpose of diverting Internet users to Respondent’s website who would otherwise have arrived at Complainant’s website. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that the display of unrelated links is not a use which provides rights or legitimate interests. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), stated that the respondent’s intent to divert Internet users to its own website and for its benefit was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent’s use of the <marlborosgreen.com> domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant supports its allegations of bad faith by arguing that the <marlborosgreen.com> domain name creates initial interest confusion, which attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO mark. Although Respondent states that the disputed domain name is inactive, the Panel notes that Complainant’s screenshot of the <marlborosgreen.com> domain name’s resolving website demonstrates that the website features a variety of unrelated links under headings such as “Free Printable Coupons” and “Vuele desde Washington DC.” The Panel infers that Respondent is compensated in exchange for displaying the links. Therefore, Respondent is making a bad faith attempt to create confusion so that it may take commercial advantage of Internet users 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)).
Lastly, Complainant contends that Respondent registered the <marlborosgreen.com> domain name with full knowledge of Complainant’s rights in the MARLBORO mark. Complainant claims that not only does Complainant own registrations for the mark, but a simple Internet search would reveal Complainant’s extensive use of the MARLBORO mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the widespread and extensive use of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Also it is clear from Respondent's response that he had actual knowledge of the Marlboro brand and trademark. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborosgreen.com> domain name is TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: September 25, 2013
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