Philip Morris USA, Inc. v. Mark Slobodzian
Claim Number: FA1401001540825
Complainant is Philip Morris USA, Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Mark Slobodzian (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborowebsite.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2014; the National Arbitration Forum received payment on January 28, 2014.
On January 27, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborowebsite.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 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 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@marlborowebsite.com. Also on January 28, 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 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <marlborowebsite.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
2. Respondent does not have any rights or legitimate interests in the <marlborowebsite.com> domain name.
3. Respondent registered and uses the <marlborowebsite.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
The Panel finds that Complainant’s trademark registrations with the USPTO establish Complainant’s rights in the MARLBORO mark pursuant to Policy ¶ 4(a)(i). The Panel notes that the Policy does not require that a mark be registered in the country in which the respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) where the panel stated that “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”
Respondent’s <marlborowebsite.com> domain name is confusingly similar to Complainant’s MARLBORO mark as the domain name uses the entire MARLBORO mark and merely adds the descriptive term “website” and the gTLD “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark. In Chevron Intellectual Prop. LLC v. Mark Slobodzian, FA 1538422 (Nat. Arb. Forum December 5, 2013), the panel determined that the <chevronwebsite.com> domain name was confusingly similar to the complainant’s CHEVRON mark because the addition of the term “website” and the inclusion of a gTLD did not sufficiently distinguish the domain name from the CHEVRON mark. The Panel thus finds that the <marlborowebsite.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 known by the disputed domain name or any name that incorporates the MARLBORO mark. Complainant states that it has not authorized Respondent’s use of the MARLBORO mark. The WHOIS record indicates that “Mark Slobodzian” is the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant demonstrates that the <marlborowebsite.com> disputed domain name resolves to a pay-per-click site where Respondent receives click-through revenues. The Panel notes that the screenshot provided shows that the resolving website promotes third-party links including < AARP.org> and <PremierCareBathing.com>. The Panel finds that this is not 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). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is intentionally trading on the goodwill of Complainant’s mark by using the confusingly similar domain name in connection with a pay-per-click website from which Respondent commercially benefits. Past panels agree. In T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel held that the registration and use of a domain name confusingly similar to the complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constituted bad faith under Policy ¶ 4(b)(iv). Likewise, the Panel finds that Respondent’s use of the <marlborowebsite.com> disputed domain name in connection with a pay-per-click website that promotes links to third-party sites is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name in bad faith because Respondent knew of Complainant’s rights in the MARLBORO mark at the time it registered the name. Complainant contends that an Internet search would have revealed Complainant’s rights in the mark and that, given the fame of the MARLBORO mark, it is inconceivable that Respondent registered the disputed domain name without knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent has demonstrated bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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); see also 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborowebsite.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 27, 2014
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