Philip Morris USA Inc. v. Vyacheslav Pyatkovskiy
Claim Number: FA1312001534520
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Vyacheslav Pyatkovskiy (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboro-red.com>, registered with CENTER OF UKRAINIAN INTERNET NAMES.
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 December 13, 2013; the National Arbitration Forum received payment on December 16, 2013. The Complaint was submitted in both Russian and English.
On December 20, 2013, CENTER OF UKRAINIAN INTERNET NAMES confirmed by e-mail to the National Arbitration Forum that the <marlboro-red.com> domain name is registered with CENTER OF UKRAINIAN INTERNET NAMES and that Respondent is the current registrant of the name. CENTER OF UKRAINIAN INTERNET NAMES has verified that Respondent is bound by the CENTER OF UKRAINIAN INTERNET NAMES 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 December 27, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of January 16, 2014 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-red.com. Also on December 27, 2013, the Russian 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 January 20, 2014, 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
A. PM USA Has Exclusive Rights in the MARLBORO® Trademarks.
PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its famous MARLBORO® trademarks. 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® trademarks and variations thereof in connection with its tobacco and smoking-related products.
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 Roof Design 938,510 July 25, 1972 Cigarettes
Complainant markets its famous MARLBORO® cigarettes to age-verified adult smokers, 21 years of age or older, in various promotional materials including direct mail, MARLBORO® cigarette packs at retail, and online at www.marlboro.com, the official website for the MARLBORO® brand.
PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States. 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 administrative panels applying the Policy already have determined that the MARLBORO® Trademarks are famous. See, e.g., Philip Morris USA Inc. v. Isaac Goldstein, NAF Claim No. FA1209001464831 (Nov. 2, 2012) (acknowledging PM USA’s many “longstanding” registrations for the MARLBORO® Trademarks); Philip Morris USA, Inc. v. Li Xiaodong, NAF Claim No. FA1106001394973 (July 25, 2011); Philip Morris USA, Inc. v. Bertin Joy Lora, NAF Claim No. FA1009001345193 (October 19, 2010); see also Philip Morris USA Inc. v. Jimbo Goldsmith-Ireland, WIPO Case No. D2013-0465 (May 14, 2013 (noting the “world-wide notorious nature of the MARLBORO trademark for cigarettes”); 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 WIPO 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).
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 or older access to information regarding PM USA, MARLBORO® products, and special offers.
B. The Infringing Domain Name Was Improperly Registered and Is Being Improperly Used
The Infringing Domain Name resolves to a website (the “Infringing Website”) that is entitled “Marlboro Red/Buy cheap Marlboro Red cigarettes online at the best prices”. The Infringing Website shows the MARLBORO® trademark with the Roof Design that is the subject of Registration 938,510 in the color red. The site also depicts a woman smoking and what purport to be MARLBORO® packs.
Most of the Infringing Website, however, is devoted to a review of “French Gitanes cigarettes”. It includes a lengthy review about the attributes of these cigarettes.
Upon information and belief, Respondent has established the Infringing Website in an attempt to trade on the goodwill of PM USA and the MARLBORO® Trademarks.
GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
A. The Infringing Domain Name Is Identical or Confusingly Similar to the MARLBORO® Trademarks.
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.
PM USA’s registrations for 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 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.”).
The Infringing Domain Name is confusingly similar to the MARLBORO® Trademarks. The Infringing Domain Name incorporates wholesale 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).
Numerous panels have held that a domain name is confusingly similar to a trademark when, as in the case of the Infringing Domain Names, the domain name incorporates the mark in its entirety. See, e.g., Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263 (accepting “that the incorporation of a complainant’s mark in a disputed domain name will often be sufficient to establish confusing similarity under Paragraph 4(a)(i) of the [UDRP] Policy”).
The addition of a color -- here, “red” -- to Respondent’s domain name does nothing to dispel the confusion with PM USA’s MARLBORO® Trademarks. See, e.g., Mastercard Intl Inc. v. Bob Norton, WIPO Case No. D2008-0703 (June 30, 2008) (“Numerous UDRP panels have found confusing similarity when confronted by disputed domain names that include a complainant’s full mark together with a simple generic term like ‘black’ ...”); Skechers U.S.A., Inc. v. Huang Jiao c/o Jiaohuang, NAF Claim No. FA1004001322018 (finding the domain name “blackskechers.com”, among other domain names, confusingly similar to the Skechers mark and noting that such “changes do not distinguish Respondent’s domain names from Complainant’s mark.”).
Likewise, the use of a hyphen is not a distinguishing factor. See, e.g., LEGO Juris A/s v. Zheng Kang, Claim No. FA 1101001369800 (March 11, 2011) (use of hyphen in domain name “lego-onsale.us” held not a distinguishing factor); Health Devices Corp. v. Aspen S T C, FA 03850000158254 (July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to [UDRP] ¶4(a)(i).”).
Due to the fame of the MARLBORO® Trademarks, the registrant of the Infringing Domain Name surely knew that the use of the term “marlboro-red.com” and would cause confusion among Internet users as to whether PM USA was affiliated with the Infringing Domain Name.
And, as previous panels have found, the addition of “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See e.g., AARC, Inc. v. Doug Petrie, NAF Claim No. 1069923 (Oct. 16, 2007).
In addition to the traditional likelihood of confusion, the registration and use of the Infringing Domain Name creates a form of initial interest confusion, which attracts Internet users to it based on 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, and that a domain name incorporating the name or mark is thus a valuable corporate asset. See Panavision Int’l, L.P. v. Toeppen, supra; see also Dr. Michael Crichton v. Alberta Hot Rods, supra.
An Internet user desiring to learn more information about MARLBORO® products may inadvertently type the “marlboro-red.com” domain name into the address bar of his or her web browser, only to be misdirected and confused at not having reached an official MARLBORO® website. The Internet user may be diverted into reading about, and searching for a website on which to purchase, French Gitanes cigarettes, which are publicized on the Infringing Website. Accordingly, the actual registrant of the Infringing Domain Name has taken advantage of the Internet user’s behavior pattern identified in Panavision and Crichton for its own commercial advantage. This type of “initial interest confusion” or diversion of traffic is illegal because the infringer has capitalized wrongfully on a trademark owner’s goodwill in its mark to divert Internet traffic for its own gain. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (“[T]here is . . . initial interest confusion in the sense that, by using ‘moviebuff.com’ or ‘MovieBuff’ to divert people looking for ‘MovieBuff’ to its website, [the infringing party] improperly benefits from the goodwill that the [trademark owner] developed in its mark.”). Furthermore, “the fact that such confusion may be dispelled . . . does not negate the fact of initial confusion . . . .”); Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166, at ¶6 (Apr. 8, 2002).
B. Respondent Has No Legitimate Interests or Rights in the Infringing Domain Name.
Respondent has no rights or legitimate interest 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. Upon information and belief, Respondent was never known by any name or trade name that incorporates the word “Marlboro,” and has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. Additionally, Respondent is not a licensee of PM USA and has not obtained permission, either express or implied, from PM USA to use the MARLBORO® Trademarks, or any domain names incorporating such trademarks, either at the time Respondent registered and began using the Infringing Domain Name, or at any time since.
Further, the misappropriation of the MARLBORO® Trademarks by use of the term “marlboro-red” -- which incorporate wholesale the MARLBORO® mark -- as the prominent portions of the Infringing Domain Name is no accident. Clearly, the Infringing Domain Name was chosen to capitalize on the association of the MARLBORO® Trademarks 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 Respondent could have no legitimate interest in the trademark. In fact, a previous panel commented that it was “inconceivable” for a 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.
Rather, upon information and belief, Respondent selected the Infringing Domain Name to trade on the goodwill associated with PM USA’s MARLBORO® Trademarks. Such misappropriation of the MARLBORO® Trademarks does not give rise to a right or legitimate interest but portends bad faith.
C. Respondent Registered and Is Using the Infringing Domain Name In Bad Faith.
(i) Respondent Registered the Infringing Domain Name in Bad Faith.
Respondent has registered the Infringing Domain Name in bad faith because, upon information and belief as described in Paragraphs 37-38 below, the Infringing Domain Names were registered with full knowledge of PM USA’s rights in the MARLBORO® Trademarks. See Societe AIR FRANCE v. Geiser Enterprises, WIPO Case No. D2008-0024 (Fed. 29, 2008) (“Registrations of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy”).
Given the fame of the MARLBORO® Trademarks, it is simply inconceivable that the registrant of the Infringing Domain Name registered it without knowledge of PM USA’s rights. 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).
In addition, 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 its MARLBORO® Trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the PTO records that are readily accessible online. Indeed, it is well-settled that PM USA’s federal trademark registrations for those of the MARLBORO® Trademarks listed in Paragraph 12 provide constructive notice of PM USA’s trademark rights. See Nokia Corp. v. [Redacted], NAF Claim No. 1220744 (Oct. 2, 2008) (“it appears that Respondent registered [the disputed domain names] with at least constructive knowledge of Complainant’s rights in the NOKIA trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use.”); Am. Online, Inc., NAF Claim No. 117319 (July 30, 2002) (noting that the registration of a mark on the PTO’s Principal Register and respondent’s intentional use of the mark demonstrated an awareness of the complainant’s mark).
Respondent registered the Infringing Domain Name, upon information and belief, to trade on the goodwill of PM USA’s MARLBORO® Trademarks by, among other things, obtaining revenue from the French Gitanes cigarettes promoted on the Infringing Website.
(ii) Respondent is Using the Infringing Domain Name in Bad Faith.
Further, Respondent’s use of domain names that fully incorporate the famous MARLBORO® word mark despite the fact that, as described above, Respondent must have been aware of PM USA’s rights in the mark, also evidences bad faith use. See Wal-Mart Stores, NAF Claim No. FA0708001060854 (Oct. 15, 2007). Due to the fame of the MARLBORO® Trademarks, Respondent surely knew that the mere addition of the letter term “red” and a hyphen would likely cause confusion among Internet users as to whether PM USA was affiliated with, or otherwise sponsored or endorsed, the Infringing Domain Name or Infringing Website.
The review and promotion of third party cigarettes on the Infringing Website is also evidence of bad faith. Cf. American Airlines, Inc. v. Insane Entertainment, LLC, Claim FA 08001065242 (Oct. 4, 2007) (ordering transfer of “americanairlinesvacations.com” and observing “[t]his domain name resolves to a website that features links to various third-party websites that offer vacation and travel services that attempt to compete with Complainant’s business. Moreover, this website features various pictures of Complainant’s jets.”).
Moreover, as noted above, the registration and use of the Infringing Domain Name creates a form of initial interest confusion, which attracts Internet users to the Infringing Domain Name based on the use of the MARLBORO® Trademarks. This is further evidence that the Infringing Domain Name is being used in bad faith. See e.g., Osuuspankkikeskus OSK v. Registerfly.com, WIPO Case No. D2006-0461 (June 13, 2006) (referencing initial interest confusion in the panel’s finding of bad faith registration and use); see also MBTI Trust, Inc. v. Training Servs. On Demand East c/o Frank Whyte, NAF Claim No. FA0910001290762 (Dec. 1, 2009) (same).
Respondent must have expected that any use of the Infringing Domain Name would cause harm to PM USA. The Infringing Domain Name is so “obviously indicative” of PM USA’s products that use of the domain name would “inevitably lead to confusion of some sort.” AT&T v. Rice, WIPO Case No. D2000-1276, at ¶6 (Nov. 25, 2000). See also Kraft Foods, Inc. v. Uknow, WIPO Case No. D2005-1153 (Jan. 1, 2006) (internal quotation marks omitted) (“when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests opportunistic bad faith.”). Indeed, the misappropriation of PM USA’s MARLBORO® mark by the registrant evidences bad faith.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 in the United States cigarettes, including cigarettes under its famous MARLBORO trademarks. Complainant owns the trademark registrations for the MARLBORO mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 68,502, registered April 14, 1908). Although Respondent appears to reside in the Ukraine, Policy ¶4(a)(i) does not require Complainant register its mark in the country where Respondent resides, so long as it can demonstrate rights in the mark in some jurisdiction. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant’s registration of the MARLBORO mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <marlboro-red.com> domain name is confusingly similar to Complainant’s MARLBORO trademark. Respondent’s addition of a color, “red,” to Respondent’s domain name does nothing to prevent confusion with Complainant’s MARLBORO trademark. Respondent’s adding of a generic or descriptive term does not sufficiently distinguish the disputed domain name from Complainant’s mark under a Policy ¶4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Respondent’s use of a hyphen is also not sufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). The gTLD “.com” in the domain name must be disregarded when comparing the disputed domain name to Complainant’s mark under Policy ¶4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Respondent’s <marlboro-red.com> domain name is confusingly similar to Complainant’s MARLBORO mark according 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 is not commonly known by the <marlboro-red.com> domain name. Respondent is not licensee of Complainant and has not obtained permission, either express or implied, from Complainant to use the MARLBORO trademarks. Respondent has no permission to use any domain names incorporating Complainant’s MARLBORO trademarks. The registrant of the disputed domain name is listed as “Vyacheslav Pyatkovskiy” in the WHOIS record. The Panel finds Respondent is not commonly known by <marlboro-red.com> domain name pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent is using the <marlboro-red.com> domain name to review and promote third-party cigarettes. Respondent’s disputed domain name resolves to a website stating “Buy French Cigarettes Gitanes Online” and includes links to competitors of Complainant. Respondent’s use of the <marlboro-red.com> domain name to provide information about related and competing products is not a Policy ¶4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s <marlboro-red.com> reviews and promotes third-party and unrelated cigarette products. Respondent’s disputed domain name links to a webpage that states along the top of the page “Buy French Cigarettes Gitanes Online.” Respondent’s disputed domain name features competing links along the side of the page. A respondent’s use of a disputed domain name to provide a competing service or to provide competing links shows bad faith use and registration under Policy ¶4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also 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 finds Respondent has used the <marlboro-red.com> domain name to mislead and divert consumers to its own webpage for financial gain, showing bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent registered the <marlboro-red.com> domain name with full knowledge of Complainant’s rights in the MARLBORO trademark. Respondent’s use of the domain name fully incorporates the famous MARLBORO mark (and appears to show a "photo-shopped" package of Complainant’s cigarettes). Respondent is using the disputed domain name to review and promote third-party cigarettes. Respondent’s use of the disputed domain name makes it clear Respondent actually knew about Complainant’s mark. 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).
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 <marlboro-red.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 20, 2014
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