Philip Morris USA Inc. v. choo jimmy / jimmy choo
Claim Number: FA1402001543163
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is choo jimmy / jimmy choo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com>, registered with HiChina Zhicheng Technology Limited.
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 February 11, 2014; the National Arbitration Forum received payment on February 11, 2014. The Complaint was submitted in both Chinese and English.
On February 11, 2014, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 19, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 11, 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@marlborocigarettesstores.com, postmaster@marlborocigarettessales.com, postmaster@marlborocigarettesonline-s.com, postmaster@cheapmarlborocigarettes-s.com, postmaster@marlborocigarettesuss.com. Also on February 19, 2014, the Chinese language 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 14, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
A. PM USA Has Exclusive Rights in the MARLBORO® Trademarks.
1. PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its famous MARLBORO® trademarks as defined below. 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® trademark and variations thereof in connection with its tobacco and smoking-related products.
2. 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:
MARLBORO® 68,502 Apr. 14, 1908 Cigarettes
MARLBORO® and Red Roof design 938,510 July 25, 1972 Cigarettes
3. PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States, and 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 panels applying the Policy already have determined that the MARLBORO® Trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (Sept. 17, 2013) (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”.); 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).
4. 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 of age or older access to information regarding PM USA, MARLBORO® products, and special offers.
B. Respondent’s Registration of the Infringing Domain Names and Bad Faith Use.
5. Respondent has registered the domain names “Marlborocigarettesstores.com,” “Marlborocigarettessales.com,” “Marlborocigarettesonline-s.com,” “Cheapmarlborocigarettes- s.com,” “Marlborocigarettesuss.com,” and “Marlborocigarettes-s.com.”
6. The Infringing Domain Names point to inactive websites (the “Infringing Websites”) that merely resolve to error messages. Each Infringing Website displays the same error message.
7. Upon information and belief, Respondent has established the Infringing Websites in an attempt to trade on the goodwill of PM USA and the MARLBORO® Trademarks.
I. GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
A. The Infringing Domain Names Are Confusingly Similar to the MARLBORO® Trademarks.
8. 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.
9. PM USA’s registrations for certain of 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 AOL LLC v. Interrante, NAF Claim No. 681239 (May 23, 2006) (when the complainant submits evidence of USPTO registrations, “such evidence establishes complainant's rights in the mark pursuant to Policy ¶4(a)(i)”); 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”).
10. The Infringing Domain Names are 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). This is especially true within the .com gTLD -- by far the most common top-level domain. See Brands Tackle Cybersquatters in 2009, UDRP becomesEco-Friendly, WIPO Press Release (Mar. 23, 2010), available at, http://www.wipo.int/pressroom/en/articles/2010/article 0007.html (“Among Top Level Domains, the .com gTLD remained the solid leader in terms of the number of domain names featuring [sic] in WIPO cases (87%).”).
11. Numerous panels have held that a domain name is confusingly similar to a trademark, when, as here, a domain name incorporates the mark in its entirety, and it is well- established that “the adaptation of a recognized trademark in a Domain Name by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity.” Am. Online, Inc. v. Yeteck Commc’n, Inc., WIPO Case No. D2001-0055 (Apr. 23, 2001) (finding the domain names “aolcasino.com,” “aolsportsbet.com,” and “aolsportsbet.net” confusingly similar to the AOL 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).
12. Moreover, Respondent’s addition of the generic terms “cigarettes,” “stores,” “sales,” and “online” to MARLBORO® within the Infringing Domain Names does nothing to alleviate any confusion, and in some instances may actually exacerbate confusion through use of terms that are indicative of Complainant’s products. 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”).
13. Further, as previous panels have found, the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See e.g., Aous Uweyda v. Abdallah Sheet, NAF Claim No. 165119 (Aug. 1, 2003); Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-0416 (June 29, 2000).
14. In addition to traditional likelihood of confusion, the registration and use of the Infringing Domain Names creates a form of initial interest confusion, which attracts Internet users to Respondent’s websites based on Respondent’s use of “marlboro.” 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); Dr.
Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, at § C.
15. Here, Respondent has incorporated the exact MARLBORO® mark into the Infringing Domain Names. Adult smokers desiring to learn more information about Complainant’s MARLBORO® cigarettes may inadvertently type any of the Infringing Domain Names into the address bar of his or her web browser, only to be misdirected to one of Respondent’s websites. Having arrived at Respondent’s Infringing Websites, adult smokers would be frustrated and confused at not having reached an official PM USA website. Accordingly, Respondent is taking advantage of the Internet user behavior pattern identified in Panavision and Crichton for its 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 to the infringer’s sites. 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.”). Although such confusion may ultimately be dispelled, this “. . . does not negate the fact of initial confusion . . . .” Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166, at ¶6 (Apr. 8, 2002). See also MBTI Trust, Inc v. Training Services, NAF Claim No. 1290762 (Dec. 1, 2009) (“when Internet users reach the [respondent’s] website searching for Complainant’s products and services . . . initial confusion has already occurred.”).
B. Respondent Has No Legitimate Interests or Rights in the Infringing Domain Names.
16. Respondent has no legitimate interests or rights in the Infringing Domain Names. 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. Respondent was never known by any name or trade name that incorporates the word “Marlboro.” On information and belief, Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. 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 Names, or at any other time since.
17. Respondent’s misappropriation of the MARLBORO® mark by its inclusion in the Infringing Domain Names is no accident. Clearly, Respondent chose to use this trademark to draw Internet users to its websites by capitalizing on the association of the MARLBORO® mark 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 illegitimate “traders” such as Respondent could have no legitimate interest in the trademark. In fact, a previous panel applying the Policy commented that it was “inconceivable” for the 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.
18. Rather, upon information and belief, Respondent’s objective at the outset was to divert Internet users seeking to visit PM USA’s legitimate website. Such misappropriation of the MARLBORO® Trademarks does not give rise to a right or legitimate interest but, as detailed in Section VII.C. below, portends Respondent’s bad faith. See e.g., Fluor Corp. v. Above.com Domain Privacy, WIPO Case No. D2010-0583 (June 24, 2010) (noting that it is “well established” that the use of a domain name to “trade[] off Complainant’s trademark . . . is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); CIMB Group Sdn. Bhd., v. PirvacyProtect.org, WIPO Case No. D2010-1680 (Nov. 24, 2010) (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests); see also Pharmacia & Upjohn Co. v. Moreonline, WIPO Case No. D2000-0134 (April 19, 2000) (“mere registration does not establish rights or legitimate interests in the disputed domain name”).
C. Respondent Has Registered and Is Using the Infringing Domain Names in Bad Faith.
(i) Respondent Has Registered the Infringing Domain Names in Bad Faith.
19. Respondent has registered the Infringing Domain Names in bad faith by doing so with full knowledge of PM USA’s rights in the MARLBORO® Trademarks. See GA Modefine
S.A. v. Casey, WIPO Case No. D2009-0826 (Oct. 2, 2009) (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products); Univsion Communication, Inc. v. Norte, NAF Claim No. 1000079 (Aug. 16, 2007) (“The Panel finds the disputed domain name was registered with actual knowledge of Complainant’s mark, and this supports findings of bad faith registration and use under Policy ¶4(a)(iii).”).
20. There is no doubt that Respondent was aware of PM USA’s rights in the MARLBORO® Trademarks. Indeed, Respondent included the term “cigarettes” in each Infringing Domain Name, which demonstrates Respondent’s knowledge of PM USA and its MARLBORO® Trademarks and cigarettes. See Deutsche Lufthansa AG v. Miguel Casajuana, WIPO Case No. D2009-0018 (Mar. 9, 2009) (“bad faith is indicated by the Respondent adding the word ‘airlines’ [to the disputed domain name] which meaning is essential to the Complainant’s scope of business. The Respondent appears to have clearly known of Complainant’s LUFTHANSA trademark and the business in which the trademark is used.”).
21. 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 the MARLBORO® Trademarks would also have been obvious through basic domain name searches, and searches of the PTO records that are readily accessible online. Respondent is deemed to have constructive notice of PM USA’s trademark rights by virtue of PM USA’s federal registrations for those of the MARLBORO® Trademarks listed in Paragraph See Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. 02000-0090 (Apr. 11, 2000); see also Am. Online, Inc., NAF Claim No. FA117319 (Sept. 19, 2002) (noting that the registration of a mark on the PTO’s Principal Register and respondent’s intentional use of the mark and logo demonstrated an awareness of the complainant’s mark).
22. Moreover, on information and belief, the Respondent has included false and or incomplete contact information in the Whois Database. For example, Respondent provides his city as “new yourk” and his state has “NV,” a standard abbreviate for the state of Nevada, in connection with the “Marlborocigarettes-s.com” Infringing Domain Name. “New yourk” does not correspond to any actual location in the state of Nevada. Additionally, upon information and belief, choo jimmy or jimmy choo is not the Respondent’s true identity, but instead is the name of the famous shoe brand, JIMMY CHOO®. See http://us.jimmychoo.com/?geoip=geoip (true JIMMY CHOO® website). Likewise, the address for the remaining Infringing Domain Names includes “star stree”, which appears to be incomplete and false. This false contact information is an additional indicator of bad faith, as past panels have recognized. See, e.g., Morgan Stanley v. Meow, NAF Claim No. 0671304 (May 22, 2006) (explaining that “provid[ing] incorrect WHOIS information” is “indicative of bad faith”).
23. Finally, the Respondent’s registration of multiple domain names that infringe PM USA’s MARLBORO® trademark is further evidence of bad faith. See, e.g., L’Oreal & Laboratorie Garnier Et Compagnie v. Soma, WIPO Case No. D2011-0860 (July 14, 2011) (registration of three domain names incorporating complainant’s trademarks was indicative of bad faith); Bayer Schering Pharma AG v. New World Express, LLC, WIPO Case No. D2010- 1387 (Nov. 10, 2010) (“Respondent has registered at the same time four domain names which can be considered similar to the Complainant’s trademark. In view of the Panel, such conduct constitutes a pattern of conduct preventing a trade or service mark owners from reflecting the mark in a corresponding domain name . . . which lead[s] the Panel to conclude that the disputed domain names have been registered and are used in bad faith by the Respondent.”); Venetian Casino Resort, LLC v. WorldWide Mob Ties Inc., NAF Claim No. 1013350 (Aug. 14, 2007) (registration of three domain names demonstrated bad faith under the Policy).
(ii) Respondent Is Using the Infringing Domain Names in Bad Faith.
24. It is well-settled that Respondent’s very method of infringement -- using the exact MARLBORO® Trademarks to lure adult smokers to the Infringing Websites -- demonstrates bad faith use under the Policy. See, e.g., Popular Enters., LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742 (Nov. 30, 2003) (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith) (citations omitted); Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (Nov. 7, 2002) (finding bad faith registration and use because respondent was “attracting traffic that he would otherwise not get for his website”). This conclusion is not altered merely because the Infringing Domain Names are currently associated with inactive websites. See, e.g., DHL Operations B.V. v. Net Marketing Group, WIPO Case No. D2005-0868 (Oct. 12, 2005) (noting that “the indefensible choice of the domain name by the Respondent coupled with an inactive website has been held in several previous decisions to constitute bad faith”); Pharmacia & Upjohn Co., WIPO Case No. D2000-0134 (bad faith use demonstrated by mere registration of domain name that incorporated complainant’s exact, well-known trademark, despite lack of active website associated with the disputed domain). In fact, the status of Respondent’s websites as inactive, bolsters the implication of bad faith. See, e.g., Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, NAF Claim No. 1276302 (Sept. 17, 2009) (concluding that failure to make an active use of the infringing domain name supports a finding of registration and use in bad faith); Mindware Holdings, Inc. v. Epium Plc., NAF Claim No. 1049533 (Sept. 12, 2007) (“mere holding of an infringing domain name without any active use allows for the inference that the domain name was registered and is being held in bad faith.”).
25. As noted above, in addition to traditional likelihood of confusion, Respondent’s registration and use of the Infringing Domain Names also creates a form of initial interest confusion, which attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO® Trademarks. This is further evidence of Respondent’s bad faith registration and use of the Infringing Domain Names. 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); MBTI Trust, Inc., NAF Claim No. 1290762 (same).
26. Respondent must have expected that any use of the Infringing Domain Names would cause harm to PM USA. The Infringing Domain Names are so “obviously indicative” of PM USA’s MARLBORO® products that Respondent’s use of these domain names 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) (“[W]hen 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” (emphasis added)). As such, Respondent’s misappropriation of PM USA’s exact MARLBORO® Trademarks evidences Respondent’s bad faith.
27. Finally, Respondent’s pattern of conduct -- registering six domain names incorporating the exact MARLBORO® -- also demonstrates Respondent’s bad faith use of the Infringing Domain Names under the Policy. See e.g., Venetian Casino, NAF Claim No. 1013350.
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 must prove the following three elements to obtain an order canceling 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 manufactures, markets, and sells cigarettes under the MARLBORO mark. Complainant owns and operates the <marlboro.com> domain name. Complainant owns the mark through its registrations of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908) for use in connection with cigarettes. USPTO registrations are generally sufficient to establish rights in a mark under the Policy, even if the respondent resides outside of the United States. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”); see also 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). Complainant has successfully established its rights in the MARLBORO mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names are each confusingly similar to Complainant’s MARLBORO mark. Respondent’s addition of generic terms such as “cigarettes,” “stores,” “sales,” and “online” to the MARLBORO mark within the domain names does nothing to prevent confusion. 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 addition of a gTLD such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark because it is required by domain name syntax. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The <marlborocigarettesonline-s.com> and <cheapmarlborocigarettes-s.com> domain names also include a hyphen and an errant letter “s.” These changes are not adequate to distinguish the mark from the disputed domain names. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)). Respondent’s <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names are each 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.”).
Respondent has never been known by any name or trade name incorporating the word “Marlboro.” Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO mark. Respondent has not received any license, authorization, or consent - express or implied - to use the MARLBORO mark in a domain name or in any other manner. From this uncontroverted evidence, it is clear Respondent cannot be commonly known by the <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, or <marlborocigarettesuss.com> domain name according to 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).
Respondent’s disputed domain names points to an inactive website, with each page displaying the same error message. While there are other ways to use a domain name other than having a web site, such as an ecommerce portal or an email platform. While such uses may not be evident to a casual browser, Respondent has not claimed to be using the disputed domain names at all (because Respondent has not responded at all). Respondent’s <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names don’t appear to being used, suggesting a lack of rights and legitimate interests pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name).
Respondent has given inaccurate WHOIS information. This means Respondent could not acquire any rights to the disputed domain names even if they were being used because Respondent was not associating itself with the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registration of multiple domain names infringing Complainant’s MARLBORO trademark in the instant proceeding is evidence of bad faith. Respondent has registered five different domain names incorporating Complainant’s MARLBORO mark. While this Panel has never considered the issue before, other cases have held that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶4(b)(ii)). This Panel is not convinced such conduct constitutes bad faith pursuant to Policy ¶4(b)(ii) because Complainant has not been prevented from reflecting its mark in a domain name. However, the Panel is convinced the Respondent has demonstrated bad faith under the general penumbra of Policy ¶4(b).
Respondent’s <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names resolve to inactive websites, with each domain displaying the same error message. Complainant argues Respondent’s failure to make an active use of the disputed domain names demonstrates Respondent’s bad faith with respect to Policy ¶4(b)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Once again, the Panel is not persuaded Policy ¶4(a)(iii) applies because there is no evidence the parties are competitors.
Complainant claims Respondent registered the disputed domain names in bad faith by doing so with full knowledge of Complainant’s rights in the MARLBORO mark. Respondent included the term “cigarettes” in each domain name, suggesting Respondent was well aware of Complainant’s mark. It seems clear to this Panel Respondent had actual knowledge of Complainant's rights in the MARLBORO mark prior to registering the disputed domain names and is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Providing inaccurate (or just simply false) WHOIS information raises the rebuttable presumption in the commercial context the disputed domain names were registered and are being used in bad faith. Respondent has done nothing to rebut this presumption. Therefore, the Panel also finds bad faith registration and use on this ground.
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 <marlborocigarettesstores.com>, <marlborocigarettessales.com>, <marlborocigarettesonline-s.com>, <cheapmarlborocigarettes-s.com>, and <marlborocigarettesuss.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, March 28, 2014
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