Philip Morris USA Inc. v. Shinji Yashiki
Claim Number: FA1401001540831
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Shinji Yashiki (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboro-cigarettes-cheap.com>, registered with Melbourne IT Ltd.
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 January 27, 2014; the National Arbitration Forum received payment on January 28, 2014.
On January 28, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <marlboro-cigarettes-cheap.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 29, 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@marlboro-cigarettes-cheap.com. Also on January 29, 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 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.
11. 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
Respondent has registered the domain name “marlboro-cigarettes-cheap.com.” This Infringing Domain Name resolves to a website site located at http://marlboro-cigarettes-cheap.com (the “Infringing Website”). The Infringing Website, which is displayed in Japanese, appears to advertise and discuss credit cards.
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. 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).
Moreover, numerous panels have held that a domain name is confusingly similar to a trademark when, as here, the domain name incorporates the mark in their entireties. 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 generic or descriptive wording to the trademark, here the terms “cigarettes” and “cheap,” does nothing to alleviate confusion. See Philip Morris USA Inc. v RapidClic/Olivier Vauclin, Claim No. FA13090015200008 (Nov. 7, 2013) (addition of “e-cig”, “cigarette”, and “electronique” in domain names “marlboro-e-cig.com”, “marlboro-cigarette-electronique.com”, and “cigarette-electronique-marlboro.com” are descriptive terms that do not distinguish domain names from MARLBORO® mark); Philip Morris USA Inc. v. Donald Broussard, Claim No. FA1308001516210 (domain names marlborovapor.com, marlborovaper.com, marlborojuice.com, and marlboroejuice.com held confusingly similar to the MARLBORO® 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); The North Face Apparel Corp. v. Chen Bin, WIPO Case No. D2010-1267 (Oct. 8, 2010) (“In particular, words like ‘cheap’, ‘store’, ‘shop’, ‘buy’ prefixed or suffixed to a trademark in a domain name have consistently been held to be unable to distinguish the domain name from the trademark”).
Indeed, if anything, addition of the term “cigarettes” to MARLBORO® increases confusion between PM USA and its products and the Infringing Domain Name, because that term is clearly indicative of PM USA’s products. See Philip Morris USA Inc. v. PrivacyProtect.org, WIPO Case No. D2012-1035 (July 9, 2012) (finding use of the term “cigarettes” in the disputed domain name “marlboroscigarettes.com” to “rather seriously increase[] the likelihood of confusion as it exactly describe[d] the goods related to the trademark.”).
Due to the fame of the MARLBORO® Trademarks, the registrant of the Infringing Domain Name surely knew that the use of the term “marlboro-cigarettes-cheap” 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., Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416 (June 29, 2000); Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA0306000165119 (Aug. 1, 2003).
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 the domain name 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, 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.
An Internet user desiring to learn more information about MARLBORO® products may inadvertently type the Infringing 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. Accordingly, the Respondent, who appears to operate a website advertising credit cards, has taken advantage of the Internet user’s behavior pattern identified in Panavision and Crichton for Respondent’s 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 interests 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 never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. Indeed, Respondent could never do so because the MARLBORO® Trademarks and the many variations thereof belong exclusively to PM USA. 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.
Additionally, it is well-established that a respondent’s use of the mark in connection with a site regarding third party goods or services, here credit cards, does not establish any rights or legitimate interests in a disputed domain name. See, e.g., Lego Juris A/S/ v. Personal, Suriya Meeploud, WIPO Case No. D2010-1667 (Nov. 20, 2010) (finding respondent had no legitimate rights or interests in disputed domain name, which was used in connection with a website about “third party goods not of the Complainant’s manufacture”).
Further, the misappropriation of the MARLBORO® Trademarks by use of the term “marlboro-cigarettes-cheap” -- which incorporates wholesale the MARLBORO® mark -- as the prominent portion 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 below, the Infringing Domain Name was 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 Respondent registered the Infringing Domain Name 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).
Respondent’s knowledge of the MARLBORO® Trademarks is further confirmed by the use of the term “cigarettes” in the Infringing Domain Name.
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).
(ii) Respondent is Using the Infringing Domain Name in Bad Faith.
Respondent is using a domain name that fully incorporates 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. This 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 terms “cigarettes” and “cheap” 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.
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).
And, as previous Panels have held, use of the Infringing Domain Name in connection with the Infringing Website, which appears to advertise and discuss third-party credit card products is indicative of bad faith registration and use because it shows the Respondent has misappropriated the MARLBORO® Trademarks for Respondent’s own commercial gain. See, e.g., Lego Juris A/S/, WIPO Case No. D2010-1667 (use of a disputed domain name in connection with a website about “third party goods not of the Complainant’s manufacture” demonstrates bad faith).
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 Respondent 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 claims rights in the MARLBORO mark, used in connection with the manufacture and sale of cigarettes. Complainant owns registrations for the MARLBORO mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908). Complainant is not required to show rights in Respondent’s home country, but to merely show Complainant has rights in SOME country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant has adequately proven its rights in the MARLBORO mark within the meaning of Policy ¶4(a)(i) because Complainant owns registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <marlboro-cigarettes-cheap.com> domain name is confusingly similar to Complainant’s MARLBORO mark. The disputed domain name incorporates Complainant’s mark in its entirely while adding the descriptive terms “cigarettes” and “cheap.” The disputed domain name also includes two hyphens and the generic top-level domain (“gTLD”) “.com.” The addition of descriptive terms to a trademark in a disputed domain name does not normally sufficiently differentiate the disputed domain name from the trademark. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). The addition of hyphens and a gTLD are irrelevant for the purposes of confusing similarity analysis under the UDRP. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Respondent’s <marlboro-cigarettes-cheap.com> domain name is confusingly similar to Complainant’s MARLBORO mark within the meaning of 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 does not have any rights or legitimate interests in the <marlboro-cigarettes-cheap.com> domain name. Respondent is not commonly known by the <marlboro-cigarettes-cheap.com> domain name. Complainant has not authorized Respondent to use its MARLBORO mark in any way. The WHOIS record for the disputed domain name lists “Shinji Yashiki” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). In light of these factors and the evidence in this case, it seems clear Respondent is not commonly known by the <marlboro-cigarettes-cheap.com> domain name under Policy ¶4(c)(ii).
Complainant claims the <marlboro-cigarettes-cheap.com> domain name resolves to a website that advertises and discusses credit cards. The disputed domain name’s resolving website appears to be in the Japanese language (which this Panel cannot read). In the absence of a response from the Respondent, the Panel accepts Complainant’s summary of the web site’s contents. Using a confusingly similar domain name to promote goods or services unrelated to a complainant does not demonstrate a bona fide offering of goods or services or a 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).”). Therefore, Respondent is not making 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) because the resolving Japanese language website promotes goods unrelated to Complainant.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is not using the disputed domain name to sell Complainant’s products.
Complainant claims the <marlboro-cigarettes-cheap.com> creates initial interest confusion by using Complainant’s well-known mark to attract Internet users to an unrelated Japanese language website. When a disputed domain name is a well-known mark, the registrant has no connection to the trademark owner and the registrant has not made any good faith argument to the contrary, then there is a rebuttable presumption the respondent acted in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name). Therefore, Respondent registered and is using the <marlboro-cigarettes-cheap.com> domain name in bad faith pursuant to Policy ¶4(a)(iv) by utilizing a well-known mark in the disputed domain name while not having any connection to, or authorization from, Complainant.
Complainant claims Respondent knew of Complainant’s mark prior to registering the <marlboro-cigarettes-cheap.com> domain name because Complainant’s mark is well-known. This seems obvious by Respondent’s use of Complainant’s mark in the disputed domain name. Respondent had actual notice of Complainant's mark and its context. Respondent appears to have registered the disputed domain name in bad faith under Policy ¶4(a)(iv). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); 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).
Taking evidence as a whole, it seems clear Respondent registered and used the disputed domain name in bad faith. The disputed domain name currently resolves to a “403 Forbidden” error message, suggesting Respondent stopped making use of the disputed domain name once this UDRP proceeding commenced. This also suggests Respondent did not register and use the disputed domain name in good faith.
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-cigarettes-cheap.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, March 3, 2014
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