Philip Morris USA Inc. v. ka 3youcxi / ysourxi kta
Claim Number: FA1311001529691
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is ka 3youcxi / ysourxi kta (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboroylc.com>, registered with BIZCN.COM, INC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 14, 2013. The Complaint was submitted in Chinese and English.
On November 13, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <marlboroylc.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, INC. 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 November 22, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 12, 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@marlboroylc.com. Also on November 22, 2013, the Chinese 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
On December 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
A. PM USA Has Exclusive Rights in the MARLBORO® Trademarks.
1. PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its famous MARLBORO® trademarks as defined below. MARLBORO® cigarettes have been made and sold by PM USA (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, PM USA has used the MARLBORO® trademark and variations thereof in connection with its tobacco and smoking-related products.
2. PM USA 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
MARLBORO®
and Red Roof design 938,510 July 25, 1972 Cigarettes
3. PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States, and PM USA has thus developed substantial goodwill in the MARLBORO® Trademarks. Through such widespread, extensive efforts, the MARLBORO® Trademarks have become distinctive and are uniquely associated with PM USA and its products. Indeed, numerous panels applying the Policy already have determined that the MARLBORO® Trademarks are famous. See, e.g., Philip Morris USA, Inc. v. John Doe, NAF Claim No. 1436198 (May 4, 2012) (noting PM USA’s longstanding rights in the MARLBORO® mark “by virtue of its long use of the mark”); Philip Morris USA Inc. v. PrivacyProtect.org/ Paundrayana, WIPO Case No. D2012-0660 (May 15, 2012) (noting that PM USA and its MARLBORO® cigarettes are “well known worldwide”); Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (Dec. 2, 2011) (“finding that the Trademark [MARLBORO®] is a well-known trademark worldwide as held by many other panels”); Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263 (Nov. 9, 2009) (noting the “worldwide renown” of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (Feb. 8, 2008) (recognizing the fame of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Private, WIPO Case No. D2005-0790 (Nov. 8, 2005) (noting the “longtime use of the MARLBORO trademarks and strength of its brand”); Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245 (May 10, 2005) (stating that PM USA had used the MARLBORO® Trademarks “in a continuous and uninterrupted manner since 1883 and with the modern history of the brand beginning in 1955, and has established considerable goodwill in its mark throughout United States and the world. Complainant’s trademark MARLBORO® has been determined as famous by previous . . . administrative panels”); Philip Morris USA Inc. v. Dinoia, WIPO Case No. D2005-0171 (Apr. 25, 2005) (“Complainant manufactures, markets and sells cigarettes under the famous MARLBORO® trademarks”); and Philip Morris USA Inc. v. Spinetta, WIPO Case No. D2004-0317 (June 13, 2004) (noting the fame of the MARLBORO® Trademarks).
4. PM USA has registered the domain name marlboro.com. This domain name points to PM USA’s website, www.marlboro.com (the “MARLBORO® Website”), which enables age-verified adult smokers 21 years of age of age or older access to information regarding PM USA, MARLBORO® products, and special offers.
B. Respondent’s Bad Faith Registration and Use of the Infringing Domain Name.
5. Respondent has registered the domain name marlboroylc.com.
6. This Infringing Domain Name points to a website (the “Infringing Website”), which is in the Chinese and English languages and contains information about an online casino and casino games. The Infringing Website also displays numerous pay-per-click advertisements to other online casino websites for which the Respondent, on information and belief, derives click-through advertising revenue.
7. Upon Information and belief, Respondent has established the Infringing Website in an attempt to trade on the goodwill of PM USA and/or the MARLBORO® Trademarks.
VII. GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
A. The Infringing Domain Name Is Confusingly Similar to the MARLBORO® Trademarks.
8. Through widespread, extensive use in connection with its products, the MARLBORO® Trademarks have become uniquely associated with PM USA and its products, and are well-known and famous throughout the United States.
9. PM USA’s registrations for certain of the MARLBORO® Trademarks establish that it has rights in these marks under Paragraph 4(a)(i) of the Policy. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) ¶1.1, available at http://www.wipo.int/amc/en/domains/search/overview/index.html#11 (“If the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”); see also AOL LLC v. Interrante, NAF Claim No. 681239 (May 23, 2006) (when the complainant submits evidence of USPTO registrations, “such evidence establishes complainant's rights in the mark pursuant to Policy ¶4(a)(i)”); Cengage Learning Inc. v. Montagu, NAF Claim No. 1116919 (Jan. 15, 2008) (a panel will not “second-guess or look behind the registration of a trademark” because “[o]nce the USPTO has made a determination that the mark is registerable . . . an ICANN Panel is not empowered to nor should it disturb that determination”).
10. The Infringing Domain Name is confusingly similar to the MARLBORO® Trademarks. Courts and administrative panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) (“A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name. . . . A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.”) (internal citations omitted); see also Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, at § C (Nov. 25, 2002). This is especially true within the .com gTLD -- by far the most common top-level domain. See Brands Tackle Cybersquatters in 2009, UDRP becomes Eco-Friendly, WIPO Press Release (Mar. 23, 2010), available at, http://www.wipo.int/pressroom/en/articles/2010/article 0007.html (“Among Top Level Domains, the .com gTLD remained the solid leader in terms of the number of domain names featuring [sic] in WIPO cases (87%).”).
11. Numerous panels have held that a domain name is confusingly similar to a trademark, when, as here, a domain name incorporates the mark in its entirety, and it is well-established that “the adaptation of a recognized trademark in a Domain Name by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity.” Am. Online, Inc. v. Yeteck Commc’n, Inc., WIPO Case No. D2001-0055 (Apr. 23, 2001) (finding the domain names “aolcasino.com,” “aolsportsbet.com,” and “aolsportsbet.net” confusingly similar to the AOL mark). See also American Express Company v. Stephen B. McWilliam, NAF Claim No. 0268423 (July 6, 2004) (finding americanexpresstravel.us domain name “confusingly similar to the AMERICAN EXPRESS mark because the domain name incorporates Complainant’s mark in its entirety and simply adds the generic or descriptive” wording).
12. The letters “ylc” have no independent meaning in English or Chinese. The addition of the random letters “ylc” after “marlboro” in the second level domain of the Infringing Domain Name is immaterial; “marlboroylc.com” is confusingly similar to PM USA’s MARLBORO® Trademarks. See, e.g., Yahoo! Inc. v. Yuan Zhe Quan, NAF FA0208000117877 (Oct. 10, 2002) (finding the domain names <cnyahoo.com> and <bryahoo.com> confusingly similar to the mark YAHOO! regardless of whether the letters “CN” and “BR” are viewed as random letters or geographic identifiers); National Westminster Bank v. natwestoisplc et al, NAF FA0810001231469 (Dec. 8, 2008) (finding the domain name <natwestoisplc.com> confusingly similar to complainant’s NATWEST mark despite respondent’s addition of the random letters O, I, and S and abbreviation “PLC”).
13. Further, as previous panels have found, the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See e.g., Aous Uweyda v. Abdallah Sheet, NAF Claim No. 165119 (Aug. 1, 2003); Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416 (June 29, 2000).
B. Respondent Has No Legitimate Interests or Rights in the Infringing Domain Name.
14. Respondent has no legitimate interests or rights in the Infringing Domain Name. Respondent has no connection or affiliation with PM USA, its affiliates, or any of the many products provided by PM USA under the MARLBORO® Trademarks. Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. 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, either at the time when Respondent registered and began using the Infringing Domain Name, or at any other time since. As noted above, Respondent’s Infringing Website is written in the Chinese and English languages. On information and belief, “Marlboro” as a whole has no meaning in Chinese.
15. And, Respondent’s misappropriation of the MARLBORO® mark by its inclusion in the Infringing Domain Name is no accident. The Whois records show that the Infringing Domain Name was registered very recently, on June 11, 2013. PM USA’s use and registration of MARLBORO® predates Respondent’s domain name registration by more than a century. On information and belief, Respondent chose to use the MARLBORO® trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO® mark with PM USA’s tobacco products. As one panel found in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at § 6.2 (Feb. 18, 2000), when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,” and thus illegitimate registrants such as Respondent could have no legitimate interest in the trademark. In fact, a previous panel applying the Policy commented that it was “inconceivable” for the respondent to have a legitimate use of a domain name incorporating the MARLBORO® Trademarks “given the longtime use of the MARLBORO® trademarks and strength of its brand.” Private, WIPO Case No. D2005-0790.
16. That the Infringing Website associated with the Infringing Domain Name displays pay-per-click advertisements for which Respondent presumably generates click-through revenue also indicates Respondent’s lack of any legitimate right or interest in the Infringing Domain Name. See, e.g., Black & Decker Corp. v. Clinical Evaluations, NAF Claim No. 112629 (June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
17. On information and belief, Respondent’s objective at the outset was to divert Internet users seeking to visit PM USA’s legitimate website. Such misappropriation of the MARLBORO® Trademarks does not give rise to a right or legitimate interest but portends Respondent’s bad faith. See e.g., Fluor Corp. v. Above.com Domain Privacy, WIPO Case No. D2010-0583 (June 24, 2010) (noting that it is “well established” that the use of a domain name to “trade[] off Complainant’s trademark . . . is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); CIMB Group Sdn. Bhd., v. PirvacyProtect.org, WIPO Case No. D2010-1680 (Nov. 24, 2010) (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests); see also Pharmacia & Upjohn Co. v. Moreonline, WIPO Case No. D2000-0134 (April 19, 2000) (“mere registration does not establish rights or legitimate interests in the disputed domain name”).
C. Respondent Has Registered and Is Using the Infringing Domain Name in Bad Faith.
(i) Respondent Has Registered the Infringing Domain Name in Bad Faith.
18. On information and belief, Respondent has registered the Infringing Domain Name in bad faith by doing so with full knowledge of PM USA’s rights in the MARLBORO® Trademarks. See Univision Communication, Inc. v. Norte, NAF Claim No. 1000079 (Aug. 16, 2007) (“The Panel finds the disputed domain name was registered with actual knowledge of Complainant’s mark, and this supports findings of bad faith registration and use under Policy ¶4(a)(iii).”).
19. As past panels applying the Policy have recognized, it is simply inconceivable given the fame of the MARLBORO® Trademarks that the Respondent registered the Infringing Domain Name without knowledge of PM USA’s rights in those marks. See Bloomberg L.P. v. Boo Design Servs., NAF Claim No. 0097043 (May 17, 2001) (stating that “unless living a monastic life, Respondent has been actually aware of Complainant’s registered trademark and service mark”); Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (Dec. 26, 2007) (finding that it was “inconceivable” that the respondent “was not aware of the MARLBORO® trademarks”). And, “it has been long established by prior UDRP panels that bad faith registration and use of disputed domain names may be based solely on the worldwide fame of the trademarks or service marks to which those names are confusingly similar” if the registrant “has no connection to the corresponding complainant or its goods or services.” Wal-Mart Stores, Inc. v. James D’Souza, NAF Claim No. FA0708001060854 (Oct. 15, 2007).
20. Moreover, even a simple Internet search would have revealed PM USA’s extensive use of the MARLBORO® Trademarks as source identifiers for its tobacco products. PM USA’s rights in the MARLBORO® Trademarks would also have been obvious through basic domain name searches, and searches of the PTO records that are readily accessible online. Respondent is deemed to have constructive notice of PM USA’s trademark rights by virtue of PM USA’s federal registrations for those of the MARLBORO® Trademarks listed in Paragraph 11. See Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. 02000-0090 (Apr. 11, 2000); see also Am. Online, Inc., NAF Claim No. FA117319 (Sept. 19, 2002) (noting that the registration of a mark on the PTO’s Principal Register and respondent’s intentional use of the mark and logo demonstrated an awareness of the complainant’s mark).
21. The false nature of the Respondent’s Whois information is further evidence of its bad faith use and registration of the Infringing Domain Name. See Enterprise Holdings v. Enterprise Online Serv., Ltd., NAF Claim No. 1444232 (June 14, 2012) (“Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of the domain name.”); Choice Hotels Int’l, Inc. v. Windermere, NAF Claim No. 1364454 (Feb. 28, 2011) (“Use of false contact information constitutes further evidence of bad faith”).
22. Additionally, that the Infringing Website displays pay-per-click advertisements for which the Respondent, upon information and belief, derives revenue is evidence of registration of the Infringing Domain Name in bad faith under the Policy. See, e.g., First Quality Musical Supplies, Inc. v. Vertical Axis Inc., NAF Claim No. 1070187 (Oct. 24, 2007) (“Respondent uses the confusion [between the complainant’s mark and the disputed domain name] to attract Internet users for Respondent’s own commercial gain by presumably generating click-through revenue with the hyperlinks displayed on the website located at the disputed domain name.”).
(ii) Respondent Is Using the Infringing Domain Name in Bad Faith.
23. That Respondent registered the Infringing Domain Name with knowledge of PM USA’s rights in the MARLBORO® Trademarks is indicative not only of bad faith registration, but also of the Respondent’s bad faith use of the Infringing Domain Name. See, e.g., PSC Management LP v. Sales, NAF Claim No. 1262197 (June 23, 2009) (registration of disputed domain name with “knowledge of Complainant’s rights in the PEROT SYSTEMS service mark [was], without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii)”); see also Paragraphs 28-30.
24. It is well-settled that Respondent’s very method of infringement -- using the exact MARLBORO® Trademarks to lure Internet users to the Infringing Website to gain revenue from pay-per-click advertisements -- also demonstrates bad faith use under the Policy. See, e.g., Popular Enters., LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742 (Nov. 30, 2003) (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith) (citations omitted); Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (Nov. 7, 2002) (finding bad faith registration and use because respondent was “attracting traffic that he would otherwise not get for his website”); ER Marks, Inc. and QVC, Inc. v. Chor Thao, Claim No.: FA110400 (May 16, 2011) (“Complainant alleges that the links featured at the disputed domain name are presumably pay-per-click links that generate revenue for Respondent when clicked, so Respondent likely intends to attract and confuse Complainant’s intending customers in the hopes of profiting from the links. The Panel finds that Respondent’s attempt to attract Complainant’s customers for Respondent’s own commercial gain is in violation of Policy ¶4(b)(iv) and shows bad faith registration and use.”)
25. Respondent must have expected that any use of the Infringing Domain Name, which incorporates the famous MARLBORO® Trademarks, would cause harm to PM USA. See Microsoft Corporation v. abd naseeir, Claim No. FA 1203001434828 (April 26, 2012) (“Complainant also contends that, in light of the fame and notoriety of Complainant's MICROSOFT and WINDOWS marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the marks. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names, additional evidence of bad faith under Policy ¶4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 manufactures, markets, and sells cigarettes. Complainant owns various trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the MARLBORO mark (e.g., Reg. No. 68,503, registered April 14, 1908). Respondent appears to reside in China. However, Complainant does not need to register its mark in the country in which Respondent resides under Policy ¶4(a)(i), as long as Complainant demonstrates rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has adequately established rights in the MARLBORO mark under Policy ¶4(a)(i) through its registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO).
Complainant claims Respondent’s infringing <marlboroylc.com> domain name is confusingly similar to Complainant’s MARLBORO trademark. The addition of the random letters “ylc” after MARLBORO is immaterial and without meaning. Respondent’s adding random letters to a mark does not prevent this Panel from finding confusing similarity under Policy ¶4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Respondent’s addition of a gTLD such as “.com” must also be disregarded when determining whether a disputed domain name is confusingly similar to a protected mark under Policy ¶4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Respondent’s <marlboroylc.com> domain name is confusingly similar to Complainant’s MARLBORO mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO trademarks. Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof. Respondent has not received any license, authorization, or consent—express or implied—to use the MARLBORO mark in a domain name or any other manner. The WHOIS record lists “ka 3youcxi / ysourxi kta” as the registrant of the <marlboroylc.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. This Panel finds Respondent is not commonly known by the <marlboroylc.com> domain name pursuant to Policy ¶4(c)(ii).
The website associated with the <marlboroylc.com> domain name displays pay-per-click advertisements which presumably pay Respondent, demonstrating Respondent’s lack of any legitimate right or interest in the infringing domain name (at least absent an explanation). Respondent’s <marlboroylc.com> domain name resolves to a Chinese language website featuring on-line casino hyperlinks. Respondent is using the <marlboroylc.com> domain name to provide unrelated hyperlinks, which means Respondent is not using the disputed domain name in connection with a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)).
In addition, Respondent has not provided accurate WHOIS information. Since Respondent has not been publicly linked with the disputed domain name, Respondent cannot acquire any rights or legitimate interests in the disputed domain name while Respondent’s identity is concealed.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s infringing website resolving from the <marlboroylc.com> domain name displays pay-per-click advertisements which generate revenue for Respondent. Respondent’s <marlboroylc.com> domain name resolves to a Chinese language website featuring hyperlinks. Respondent is using the disputed domain name to provide unrelated hyperlinks for which it generates revenue. This means Respondent has registered and is using the <marlboroylc.com> domain name in bad faith pursuant to Policy ¶4(b)(iv). See 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.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Finally, Respondent did not provide accurate WHOIS information. This Panel cannot understand when there would be a good faith reason to provide inaccurate registration information. In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the domain name. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <marlboroylc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 18, 2013
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