Philip Morris USA, Inc. v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin
Claim Number: FA1401001539015
Complainant is Philip Morris USA, Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlbororblack.com> and <marlboroblac.com>, registered with Registermatrix.Com Corp.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2014; the National Arbitration Forum received payment on January 15, 2014.
On January 20, 2014, Registermatrix.Com Corp. confirmed by e-mail to the National Arbitration Forum that the <marlbororblack.com> and <marlboroblac.com> domain names are registered with Registermatrix.Com Corp. and that Respondent is the current registrant of the names. Registermatrix.Com Corp. has verified that Respondent is bound by the Registermatrix.Com Corp. 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 January 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 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@marlbororblack.com, postmaster@marlboroblac.com. Also on January 22, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
Complainant makes the following contentions:
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it uses the MARLBORO mark to market its line of cigarettes and related products. Complainant further asserts that it owns rights in the MARLBORO mark under Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO (e.g., Reg. No. 65,502 registered Apr. 14, 1908). The Panel notes that it has previously been held that a complainant’s registration of its mark with the USPTO is sufficient to confer to complainant rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It has also been held that a complainant does not need to register its mark in the respondent’s country of residence in order to sufficiently establish its rights in the mark under Policy ¶ 4(a)(i). See, e.g., 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). Therefore, the Panel holds that Complainant’s registration of its MARLBORO mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the <marlbororblack.com> and <marlboroblac.com> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i). Complainant argues that for the purposes of this analysis, the gTLD “.com” is irrelevant. The Panel accepts this assertion, noting that it has previously been determined that a domain name’s use of a gTLD such as “.com” fails to distinguish the domain name from a complainant’s mark. See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Complainant argues that the <marlbororblack.com> domain name incorporates the MARLBORO mark in its entirety while adding an extra “r” to the end of the mark as well as the term “black,” which is descriptive of Complainant’s MARLBORO BLACK mark and its corresponding MARLBORO BLACK cigarette products. Complainant similarly argues that the <marlboroblac.com> domain name merely adds the term “blac,” a common misspelling of the descriptive term “black.” The Panel notes that previous panels have held that a domain name is confusingly similar to a complainant’s mark under the Policy where the disputed domain name merely adds a single letter to the at-issue mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Therefore, the Panel holds that the added letter “r” in the <marlbororblack.com> domain name is insufficient to distinguish this domain name from Complainant’s MARLBORO mark. As to the addition of the terms “black” and “blac,” the Panel notes that it has previously been determined that a domain name is confusingly similar to complainant’s mark where the domain name fully appropriates the mark and adds a term that is descriptive of complainant’s products. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel notes that although Complainant has not submitted evidence that it owns rights in the MARLBORO BLACK trademark, it has submitted evidence that it owns the <marlboroblack.com> domain name. The Panel accepts Complainant’s contention that the term “black” is descriptive of Complainant’s business and its MARLBORO BLACK cigarette products. The Panel holds that the term “blac” constitutes a common misspelling of the descriptive term “black.” The Panel holds that the <marlbororblack.com> and <marlboroblac.com> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 commonly known by the name of “Marlboro” or any derivative thereof, and has not been licensed by Complainant to use the MARLBORO trademark in a domain name. The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii) where the complainant alleges that it has not authorized the respondent to use the appropriated mark in a domain name and nothing in the record, including the WHOIS information, suggests that the respondent is commonly known by the disputed domain name. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes that the WHOIS information identifies the registrant as “Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin,” which does not suggest that Respondent is commonly known as <marlbororblack.com> or <marlboroblac.com>. The Panel concludes that nothing in the record suggests that Respondent is commonly known by these names. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant suggests that Respondent is not using the disputed domain names for 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), because both disputed domain names resolve to generic websites promoting pay-per-click links to a variety of third-party websites. The Panel notes that according to screenshots submitted by Complainant, the website resolving from the <marlbororblack.com> domain name displays links entitled “African American Dating,” “Black Boots,” and “Africa Travel,” among others. Further, the website resolving from the <marlboroblac.com> domain name appears to promote links entitled “Wholesale Cigarette,” “Smokes,” “Pall Mall,” “Marlboro,” “Make Your Own Website,” and “Health Insurance Plans,” among others. The Panel notes that according to Complainant, the link entitled “Marlboro” resolves not to Complainant’s website, but to an ad for Campbell’s Soup. The Panel concludes from the screenshots submitted by Complainant that the disputed domain names are being used to promote links to third parties, including some third-party competitors of Complainant in the cigarette industry. The Panel notes that it has previously been held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the domain name is used to promote links to third parties, some of which directly compete with the complainant. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”). Therefore, the Panel holds that Respondent’s use of the <malrbororblack.com> and <marlboroblac.com> domain names 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).
Complainant has proven this element.
Complainant argues that Respondent has demonstrated bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv), because the disputed domain names create a likelihood of confusion with Complainant’s MARLBORO mark and exploit the goodwill developed by Complainant under that mark. Complainant further alleges that Respondent is commercially profiting from its registration and use of the <marlbororblack.com> and <marlboroblac.com> domain names in the form of click-through fees. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where there is an obvious connection between the complainant’s mark and the disputed domain name that the respondent is exploiting for its own commercial profit. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The Panel concludes that there is an obvious connection between Complainant’s MARLBORO mark and the disputed <marlbororblack.com> and <marlboroblac.com> domain names, because the MARLBORO mark is appropriated in its entirety and is the prominent word in both of the disputed domain names. The Panel notes that previous panels have presumed that a respondent is commercially profiting from a disputed domain name where the domain name resolves to a website promoting links to both competing and non-competing third parties. See, e.g., Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant has submitted evidence that the disputed domain names promote a variety of both competing and non-competing third parties. Therefore, the Panel finds that Respondent is profiting from the <marlbororblack.com> and <marlboroblac.com> domain names in the form of click-through fees. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent registered the disputed domain names with actual notice of Complainant’s rights in the MARLBORO mark. The Panel notes that it has previously been determined that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering a disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). Previous panels have inferred that a respondent had actual notice of the complainant’s rights where the appropriated trademark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Here, Complainant argues that its MARLBORO mark is so well-known that Respondent’s actual notice of Complainant’s rights in the mark can be inferred. To support this contention, Complainant points out that Complainant’s rights in its MARLBORO mark are obvious through basic domain name searches, Internet searches, and searches of records that are readily accessible online. The Panel finds Complainant’s MARLBORO trademark is so well-known that Respondent’s actual notice of the mark can be inferred. The Panel determines that Respondent registered the <marlbororblack.com> and <marlboroblac.com> domain names with actual notice of Complainant’s rights in the MARLBORO mark. The Panel holds this is further evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant suggests that Respondent has engaged in typosquatting, because the disputed domain names take advantage of Internet users that desire to learn information about MARLBORO BLACK products but inadvertently type <marlbororblack.com> or <marlboroblac.com> into their web browsers. Previous panels have held that a respondent engages in typosquatting by registering a domain name that takes advantage of a typographical error that is likely to be made by Internet users seeking goods or services under the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Previous panels have held that this typosquatting behavior is demonstrative of a respondent’s bad faith under Policy ¶ 4(a)(iii), because a typosquatted domain name is likely to mislead Internet users to believe that there is an affiliation between the respondent and the complainant. See, e.g., Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). The Panel concludes that both the <marlbororblack.com> and the <marlboroblac.com> domain names take advantage of a likely typographical error by Internet users seeking Complainant’s MARLBORO BLACK products: specifically, the inadvertent insertion of an extra letter “r” in the word “Marlboro” and the elimination of the letter “k” in the word “black.” The Panel concludes that the disputed domain names are likely to mislead Internet users and holds that Respondent’s typosquatting behavior is evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <marlbororblack.com> and <marlboroblac.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 21, 2014
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