Philip Morris USA Inc. v. James Burton / ICantBelieveItsNotTobacco.com
Claim Number: FA1309001521865
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is James Burton / ICantBelieveItsNotTobacco.com (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icantbelieveitsnotmarlboro.com>, registered with WebFusion Ltd.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2013; the National Arbitration Forum received payment on September 30, 2013.
On October 1, 2013, WebFusion Ltd. confirmed by e-mail to the National Arbitration Forum that the <icantbelieveitsnotmarlboro.com> domain name is registered with WebFusion Ltd. and that Respondent is the current registrant of the name. WebFusion Ltd. has verified that Respondent is bound by the WebFusion Ltd. 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@icantbelieveitsnotmarlboro.com. Also on October 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.
A timely Response was received and determined to be complete on October 3, 2013.
Additional Submissions.
Complainant submitted on October 9, 2013 an additional submission and Respondent replied to the additional submission on October 10, 2013.
Such submissions do not comply with Supplemental Rule 7(a) and the respective fee was not paid as required under Supplemental Rule 7(b)(ii).
On October 8, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a) (ii)
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(ii)
Respondent registered the <icantbelieveitsnotmarlboro.com> domain name on April 26, 2013.
Complainant is the registered owner of the following trademarks (the
“MARLBORO® Trademarks”), among others, on the Principal Register of the U.S. Patent and Trademark Office (“PTO”), which are valid, subsisting, and incontestable pursuant to 15 U.S.C.§ 1065:
Trademark Registration No. Date Registered Goods
MARLBORO® 68,502 Apr. 14, 1908 Cigarettes
Respondent has registered the <icantbelieveitsnotmarlboro.com> domain name.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant uses the MARLBORO mark in connection with the sale of cigarette goods and services. Complainant has long held trademark registrations for MARLBORO with the USPTO (e.g.,Reg. No. 68,502 registered on April 14, 1908). The Panel finds that Complainant’s USPTO registrations illustrate Policy ¶ 4(a)(i) rights in the MARLBORO mark, regardless of Respondent’s apparent residence in the United Kingdom. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent registered the <icantbelieveitsnotmarlboro.com> domain name.
The domain name includes the entire MARLBORO mark. Complainant
states that the addition of the gTLD is irrelevant. The Panel
agrees that the gTLD “.com” is not relevant to this analysis. See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”). The panel in Quixtar Inv., Inc. v.
Smithberger, D2000-0138 (WIPO Apr. 19, 2000), found that the introduction of
generic terms to a domain name do not ordinarily defeat the confusing similarity of that domain name. The Panel finds that the <icantbelieveitsnotmarlboro.com> domain name uses generic terms in a manner that does not defeat confusing similarity, such confusing similarity exists under Policy ¶ 4(a)(i). The wording: “I cant believe its not” without the spaces between the words does not serve to eliminate confusion instead it calls attention to the mark Marlboro which the public will identify as a well known mark.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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 argues that Respondent is not known by the <icantbelieveitsnotmarlboro.com> domain name and that Complainant has never authorized Respondent’s use of the MARLBORO mark in a domain name. The Panel notes that Respondent has self-identified as
“James Burton/IcantBelieveItsNotTobacco Limited.” The Panel agrees that Respondent is clearly not known by the <icantbelieveitsnotmarlboro.com> domain name under Policy ¶ 4(c)(ii) when Respondent itself fails to suggest that it is known by the domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent uses the <icantbelieveitsnotmarlboro.com> domain name to promote pay-per-click advertisements that send Internet users to various third party websites, including websites that solicit cigarette goods. The Panel notes that both parties agree that the domain name resolves to a hyperlink advertisement listing. See Amended Complaint, at Attached Annex E; see also Response, at Attached Exs. A - B (noting that Respondent’s record evidences a different format for the click-through hyperlink website). Previous panels have found that it is ordinarily neither bona fide nor legitimately non-commercial to use a domain name to host advertisements for related or unrelated goods or services. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). The Panel finds that Respondent has not engaged in a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant claims that Respondent seeks to engage in the bad faith likelihood of confusion by luring Internet users to the <icantbelieveitsnotmarlboro.com> domain name by creating the impression that the domain name and its affiliated hyperlink advertisements are associated with the MARLBORO mark. The Panel again notes that the domain name resolves to a website dedicated to the promotion of hyperlink advertisements. See Amended Complaint, at Attached Annex E; see also Response, at Attached Exs. A - B. Previous panels have found that when a confusingly similar domain name is used to promote hyperlink advertisements, it can be inferred that a likelihood exists that Internet users will confuse Complainant as the source or origin of the domain name’s content. See, e.g., Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel thus finds that Respondent has acted in Policy ¶ 4(b)(iv) bad faith in regards to the <icantbelieveitsnotmarlboro.com> domain name.
Complainant also argues that Respondent had full knowledge of Complainant’s rights in MARLBORO prior to registering this infringing <icantbelieveitsnotmarlboro.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. 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 <icantbelieveitsnotmarlboro.com> domain name be TRANSFERRED from Respondent to Complainant.
Jaime Delgado, Panelist
Dated: October 17, 2013
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