Philip Morris USA Inc. v. kimyongho
Claim Number: FA1401001541709
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is kimyongho (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboro83.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 1, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <marlboro83.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@marlboro83.com. Also on February 3, 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 March 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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. Policy ¶ 4(a)(i)
a. Complainant and its various predecessor entities have manufactured, marketed, and sold cigarettes in the United States under the MARLBORO mark since 1883.
b. Complainant owns and operates the <marlboro.com> domain name, where it provides information regarding its products and special offers. See Complainant’s Annex D.
c. Complainant has registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908). These registrations establish Complainant’s rights in the mark under the Policy.
d. The <marlboro83.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
i. Complainant also uses the MARLBORO EIGHTY-THREES mark in connection with its cigarette products. See Complainant’s Annex G, purporting to show a printout from Complainant’s website.
ii. The addition of “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
2. Policy ¶ 4(a)(ii)
a. 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.
i. Respondent is not a licensee of Complainant and has never obtained permission, either express or implied, to use the MARLBORO mark or any domain names incorporating the mark.
b. Respondent selected the at-issue domain name to trade on the goodwill associated with Complainant’s MARLBORO trademark.
c. Respondent’s <marlboro83.com> domain name resolves to a website displaying information regarding clothes modeling and the promotion of a nightclub. See Complainant’s Annex E.
3. Policy ¶ 4(a)(iii)
a. Respondent’s registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to Respondent’s website based on Respondent’s infringing use of the MARLBORO mark.
b. Respondent registered <marlboro83.com> with full knowledge of Complainant’s rights in the MARLBORO mark.
i. Complainant’s mark is internationally famous.
ii. Complainant’s USPTO registrations provide constructive notice.
B. Respondent
1. Respondent failed to submit a response in this proceeding. Respondent registered the <marlboro83.com> domain name on September 4, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 and its various predecessor entities have manufactured, marketed, and sold cigarettes in the United States under the MARLBORO mark since 1883. Complainant adds that it owns and operates the <marlboro.com> domain name, where it provides information regarding its products and special offers. See Complainant’s Annex D. Complainant also provides evidence of its registrations for the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908). Complainant urges that these registrations establish Complainant’s rights in the mark under the Policy. Previous panels have agreed that evidence of USPTO registration is sufficient to confer rights under Policy ¶ 4(a)(i). See, e.g., Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel concludes that Complainant has established rights in the MARLBORO mark for the purposes of Policy ¶ 4(a)(i), the fact that Respondent appears to reside in South Korea notwithstanding. 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 argues that the <marlboro83.com> domain name is confusingly similar to Complainant’s MARLBORO mark. Complainant claims to also use the MARLBORO EIGHTY-THREES mark in connection with its cigarette products. The Panel notes that although Complainant does not provide evidence of its registration of the MARLBORO EIGHTY-THREES mark with any trademark authority, Complainant does provide what purports to be a printout from Complainant’s website showing Complainant’s use of the mark. See Complainant’s Annex G. The Panel therefore determines that the numeral “83” in the disputed domain name is descriptive of products sold through Complainant’s business. Complainant further argues that the use of the generic top-level domain (“gTLD”) “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. As the Panel agrees that neither Respondent’s addition of the descriptive term “83” nor Respondent’s affixation of a gTLD distinguishes the <marlboro83.com> domain name from the MARLBORO mark, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
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 contends that 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. Complainant adds that Respondent is not a licensee of Complainant and has never obtained permission, either express or implied, to use the MARLBORO mark or any domain names incorporating the mark. The Panel notes that Respondent has not refuted these allegations, as Respondent has failed to submit a response to this proceeding. In light of the dearth of evidence in the record to the contrary, the Panel determines that Respondent is not commonly known by the <marlboro83.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also 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 further contends that Respondent selected the at-issue domain name to trade on the goodwill associated with Complainant’s MARLBORO trademark. According to Complainant, Respondent’s use of the confusingly similar <marlboro83.com> domain name redirects traffic intended for Complainant to Respondent’s unrelated website. Complainant provides that Respondent’s website displays information regarding clothes modeling and the promotion of a nightclub. See Complainant’s Annex E. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel explained that the respondent’s use of a disputed domain name to divert customers looking for products relating to complainant’s famous SEIKO mark to a website unrelated to the mark was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel likewise determines that Respondent’s use of the <marlboro83.com> domain name, which incorporates Complainant’s famous MARLBORO mark, to host a website with content unrelated to Complainant’s business constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to Respondent’s website based on Respondent’s infringing use of the MARLBORO mark. According to Complainant, Respondent selected the <marlboro83.com> domain name, which fully incorporates Complainant’s MARLBORO mark, in order to trade on the goodwill associated with Complainant’s mark. Complainant reasons that Respondent’s use of this confusingly similar domain name creates a likelihood of confusion in the minds of consumers intending to reach Complainant online, and that these consumers are instead redirected to Respondent’s unrelated website. See Complainant’s Annex E. As the Panel anticipates that Respondent generates some sort of commercial gain through its operation of a website providing information regarding clothes modeling and the promotion of a nightclub, the Panel determines that Respondent intentionally created confusion with Complainant in order to realize such commercial gain. The Panel therefore concludes that Respondent registered and uses the <marlboro83.com> domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent seeks to attract misdirected visitors for its own commercial gain. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant next argues that Respondent registered <marlboro83.com> with full knowledge of Complainant’s rights in the MARLBORO mark. Complainant maintains that its mark is internationally famous, and has been in use for over 130 years. Complainant also asserts that its USPTO registrations provide constructive notice. While panels have concluded that constructive notice is not sufficient to support a finding of bad faith, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights upon registration of the disputed domain name. Thus, the Panel holds that Respondent registered the <marlboro83.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro83.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 11, 2014
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