Philip Morris USA Inc. v. billy januar
Claim Number: FA1402001542311
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is billy januar (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2014; the National Arbitration Forum received payment on February 5, 2014.
On February 6, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@mentholmarlboro.com, postmaster@lightsmarlboro.com, postmaster@iceblastmarlboro.com, postmaster@blackmarlboro.com. Also on February 6, 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 5, 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
1. Complainant manufactures, markets, and sells cigarettes in the United States. Complainant operates its own website located at <marlboro.com>
2. Complainant has 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 and Trademark Office (“USPTO") (e.g., Reg. No. 68,502 registered 1908).
3. Respondent’s <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names are all confusingly similar to Complainant’s MARLBRO mark. All of the disputed domain names incorporate Complainant’s mark in its entirety, and each domain name includes a term that refers a product that Complainant sells. Further, each domain name adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent does not have any rights or legitimate interests in the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its MARLBORO mark in any way.
b. In Sections VI.B.18 and 19, Complainant states that each of the disputed domain names resolves to a website entitled “Cheap Marlboro Cigarettes” or “Marlboro Ice Blast” that purports to sell various products of Complainant. See Complainant’s Exhibit F. When a user clicks on a depiction of Complainant’s product on the resolving website, the user is directed to <www.cloverdealer.com>, which Complainant believes is an online cigarette store located in Jakarta, Indonesia.
c. Respondent is using the disputed domain names to operate a directory website. See Complainant’s Exhibit F.
5. Respondent registered and is using the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names in bad faith.
a. Respondent is selling grey market goods of Complainant’s products through the disputed domain names. Each of the disputed domain names resolves to a website entitled “Cheap Marlboro Cigarettes” or “Marlboro Ice Blast” that purports to sell various products of Complainant. See Complainant’s Exhibit F.
b. Respondent had knowledge of Complainant’s mark prior to registering the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names because Complainant’s mark has achieved long-standing International fame.
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 Billy Januar of West Java, Indonesia. Respondent’s registrar’s address is listed as India. Respondent registered the disputed domains on or about June 17, 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 contends it has rights in the MARLBORO mark, used in connection with the manufacture and sale of cigarettes. Complainant states it owns registrations for the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered 1908). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence) The Panel here finds that Complainant has rights in the MARLBORO mark within the meaning of Policy ¶ 4(a)(i) because Complainant has valid trademark 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 alleges that Respondent’s <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names are all confusingly similar to Complainant’s MARLBRO mark. Complainant asserts that all of the disputed domain names incorporate Complainant’s mark in its entirety, and each domain name includes a term that refers a product that Complainant sells. Further, Complainant states that each domain name adds the gTLD “.com.” The Panel notes that the <mentholmarlboro.com> domain name includes the term “menthol,” the <lightsmarlboro.com> domain name includes the term “lights,” the <iceblastmarlboro.com> domain name includes the terms “ice” and “blast,” and the <blackmarlboro.com> domain name includes the term “black.” The Panel further notes that the addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also notes that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel here finds that Respondent’s <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names are all confusingly similar to Complainant’s MARLBRO mark pursuant to 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 Respondent does not have any rights or legitimate interests in the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names. Complainant alleges that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its MARLBORO mark in any way. The Panel notes that the WHOIS record for the disputed domain names lists “billy januar” 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 a 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). Because Respondent was not authorized by Complainant to use the MARLBORO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names under Policy ¶ 4(c)(ii).
Complainant claims Respondent is using the disputed domain names to operate a directory website. The Panel notes that the resolving websites appear to only promote Complainant’s products. In previous cases, panels have found that using a confusingly similar domain name and a complainant’s mark to sell products in competition with a complainant does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). The Panel here finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using Complainant’s mark to sell goods in competition with Complainant.
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 contends Respondent registered and is using the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names in bad faith. Complainant alleges that Respondent is selling grey market goods of Complainant’s products through the disputed domain names. Complainant observes that each of the disputed domain names resolves to a website entitled “Cheap Marlboro Cigarettes” or “Marlboro Ice Blast” that purports to sell various products of Complainant. In previous cases, panels have found that using a confusingly similar domain name to sell counterfeit or grey market goods demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Syneron Medical Ltd. v. Sabria Mosrati, FA 1504874 (Nat. Arb. Forum July 30, 2013) (“[the] [r]espondent’s website makes use of the ME MY ELOS mark in promoting what appear to be either grey market goods or counterfeits, thus creating the mistaken impression amongst Internet users that the content and goods promoted on the resolving website are affiliated with the complainant and its ME MY ELOS mark. Such conduct of [the] [r]espondent constitutes bad faith registration and use, under Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent registered and is using the <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is selling grey market goods through the disputed domain names.
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 <mentholmarlboro.com>, <lightsmarlboro.com>, <iceblastmarlboro.com>, and <blackmarlboro.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 18, 2014
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