Philip Morris USA Inc. v. Miro Topolovec
Claim Number: FA1401001540184
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Miro Topolovec (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldmarlboro.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2014; the National Arbitration Forum received payment on January 23, 2014.
On January 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <goldmarlboro.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@goldmarlboro.com. Also on January 23, 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 Darryl C. Wilson 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. Complainant, Philip Morris USA, manufactures, markets, and sells cigarettes in the United States, including cigarettes under its famous MARLBORO trademarks.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MARLBORO mark (e.g., Reg. No. 68,502, registered April 14, 1908).
c. Respondent’s domain name incorporates the mark in its entirety. The mere addition of “gold” does not distinguish <goldmarlboro.com>. Further, the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
d. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the <goldmarlboro.com> domain name.
ii. Respondent’s objective at the outset was to divert Internet seeking to visit Complainant’s legitimate website to Respondent’s directory website.
e. Respondent has registered and is using the infringing domain name in bad faith.
i. Respondent registered the infringing domain name to trade on the goodwill of Complainant’s MARLBORO trademarks by obtaining revenue from the pay-per-click advertisements displayed on the infringing websites.
ii. Respondent has registered the infringing domain name in bad faith with full knowledge of Complainant’s rights in the MARLBORO trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris USA Inc., of Richmond, VA, USA, is the owner of USA registrations for the MARLBORO trademark which it has used continuously since at least as early as 1908 in association with the manufacturing, marketing and selling of cigarettes. Complainant also owns the <marlboro.com> website which is utilized to provide additional information and special offers related to its products.
Respondent is Miro Topolovec of Hrvatska, Croatia. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <goldmarlboro.com> domain name on or about August 22, 2013.
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 claims that it manufactures, markets, and sells cigarettes in the United States, including cigarettes under its famous MARLBORO trademarks. Complainant asserts that it is the owner of trademark registrations with the USPTO for the MARLBORO mark (e.g., Reg. No. 68,502, registered April 14, 1908). See Complainant’s Annex C. The Panel finds that while Respondent appears to reside in Croatia, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can establish 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). Accordingly, the Panel finds that Complainant’s registration of the MARLBORO mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See 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)).
Complainant asserts that Respondent’s <goldmarlboro.com> domain name incorporates the mark in its entirety. Complainant argues that Respondent’s mere addition of the generic term “gold” does not distinguish the <goldmarlboro.com> domain name from Complainant’s mark. The Panel notes that Respondent’s inclusion of a generic word is inconsequential to 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). Further, Complainant contends that the addition of a gTLD such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. The Panel further notes that Respondent’s addition of a gTLD does not differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that Respondent’s <goldmarlboro.com> domain name is confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the <goldmarlboro.com> domain name. Complainant alleges that Respondent has no connection or affiliation with Complainant, its affiliates, or any of the goods provided by Complainant under the MARLBORO trademarks. Complainant claims that Respondent was never known by any name or trade name that incorporates the word MARLBORO. Complainant states that Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof. Complainant argues that 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. The Panel notes that the WHOIS information identifies “Miro Topolovec” as the registrant of record for the disputed domain name. The Panel finds that Respondent is not commonly known by the <goldmarlboro.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s objective at the outset was to divert Internet seeking to visit Complainant’s legitimate website to Respondent’s directory website. The Panel notes that Respondent’s <goldmarlboro.com> domain name resolves to a hyperlink directory featuring links titled “$2.95 Domains at Go Daddy,” “Free Samples in Your Mail,” “Expense Report Software,” and more. See Complainant’s Annex E. The Panel finds that Respondent’s use of the <goldmarlboro.com> domain name to provide unrelated links is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent registered the <goldmarlboro.com> domain name to trade on the goodwill of Complainant’s MARLBORO trademarks by obtaining revenue from the pay-per-click advertisements displayed on the infringing websites. The Panel notes that Respondent’s <goldmarlboro.com> domain name links to a hyperlink directory featuring links titled “Free Printable Coupons,” “Free Roofing Estimates,” “I Prefer Silver to Gold,” and others. See Complainant’s Annex E. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel held that “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).”
The Panel finds that Respondent’s use of the disputed domain name to attract Internet users to its own website for commercial gain shows bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <goldmarlboro.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 28, 2014
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