Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier
Claim Number: FA1309001520008
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is RapidClic / VAUCLIN Olivier (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com>, registered with OVH 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2013; the National Arbitration Forum received payment on September 19, 2013. The Complaint was submitted in both French and English.
On September 18, 2013, OVH LTD confirmed by e-mail to the National Arbitration Forum that the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names are registered with OVH LTD and that Respondent is the current registrant of the names. OVH LTD has verified that Respondent is bound by the OVH 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 September 27, 2013, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of October 17, 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@marlboro-e-cig.com, postmaster@marlboro-cigarette-electronique.com, postmaster@cigarette-electronique-marlboro.com. Also on September 27, 2013, the French lanuage 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 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARLBORO mark. Respondent’s domain names are confusingly similar to Complainant’s MARLBORO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names, and that Respondent registered and uses the 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 contends that it has rights in the MARLBORO mark, used in connection with cigarettes. Complainant is the owner of registrations with the USPTO for the MARLBORO mark (e.g., Reg. No. 68,502 registered April 14, 1908). A complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). 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 next alleges that Respondent’s <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names are confusingly similar to Complainant’s MARLBORO mark. Complainant states that all three disputed domain names include Complainant’s MARLBORO mark in its entirety. Complainant notes that the <marlboro-e-cig.com> domain name includes the descriptive term “e-cig,” referencing electronic cigarettes. Complainant also notes that the <marlboro-cigarette-electronique.com> and <cigarette-electronique-marlboro.com> domain names include the descriptive terms “cigarette” and “electronique,” as well as a hyphen between each word in the domain name. Complainant states that all three domain names include the gTLD “.com.”. First, the Panel finds that the addition of descriptive terms does not sufficiently distinguish a disputed domain name from a trademark. See Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Next, the Panel finds that the addition of a gTLD or a hyphen is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has no rights or legitimate interests in the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names. Complainant contends that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its MARLBORO mark in any way. The WHOIS record for all of the disputed domain names lists “Rapid Clic / VAUCLIN Olivier” as the domain name registrant. The WHOIS record and the evidence as a whole demonstrates that respondent is not commonly known by the disputed domain names. 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 in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant states that the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names all resolve to websites that appear to be portals for web-based e-mail programs, such as “atmail,” “SquirrelMail,” and “Hastymail.” Using a domain name to display hyperlinks unrelated to a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent’s use of the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names to operate portals for web-based e-mail programs 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(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names in bad faith. Complainant asserts that Respondent has engaged in a pattern of conduct by registering the three domain names involved in this dispute. A single instance of registering several infringing domain names has been held to constitute bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent’s registrations of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant claims Respondent is attempting to attract Internet traffic to its inactive websites connected to the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names. All of the resolving websites do display some content and thus are not inactive. However, the links featured via the domain names allow the Panel to infer that Respondent is generating click-through revenue from the links, which in turn allows the Panel to find Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Respondent had knowledge of Complainant’s MARLBORO mark at the time of registereing the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names because Respondent included the terms “cigarette” and “cig” in the disputed domain names, referring specifically to Complainant’s business, and Complainant has used the mark extensively. 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 name 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro-e-cig.com>, <marlboro-cigarette-electronique.com>, and <cigarette-electronique-marlboro.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 7, 2013
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