Philip Morris USA Inc. v. Online Management
Claim Number: FA1402001546122
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboroisotopes.com> and <amrlboro.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2014; the National Arbitration Forum received payment on February 28, 2014.
On February 28, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marlboroisotopes.com> and <amrlboro.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@marlboroisotopes.com, postmaster@amrlboro.com. Also on March 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 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
· Complainant has used the MARLBORO mark to promote its tobacco products, namely cigarettes. Complainant registered the MARLBORO mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 68,502 registered April 14, 1908).
· Respondent’s <marlboroisotopes.com> and <amrlboro.com> domain names are confusingly similar to the MARLBORO mark. The <amrlboro.com> domain name misspells MARLBORO and adds the generic top-level domain (“gTLD”) “.com.” The <marlboroisotopes.com> domain name adds the gTLD as well as the generic term “isotopes.”
· Respondent is not known by either of these <marlboroisotopes.com> and <amrlboro.com> domain names. Complainant has not otherwise permitted Respondent to utilize the MARLBORO mark in domain names.
· Respondent has caused the <marlboroisotopes.com> and <amrlboro.com> domain names to resolve to generic hyperlink advertisement websites wherein unrelated and various third-party businesses are promoted.
· Respondent is capitalizing on Internet users’ likelihood of confusion when the user sees monetized hyperlinks on the <marlboroisotopes.com> and <amrlboro.com> domain names and these users likely believe that Complainant must somehow be associated with these offerings. Respondent in turn receives advertising revenues for sending Internet users to these sponsored companies.
· Respondent had constructive and actual notice of Complainant’s rights in the MARLBORO mark when registering the <marlboroisotopes.com> and <amrlboro.com> domain names.
· Respondent registered the domain names as follows: <marlboroisotopes.com>, registered August 18, 2013; and <amrlboro.com>, registered July 21, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARLBORO mark. Respondent’s domain names are confusingly similar to Complainant’s MARLBORO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <marlboroisotopes.com> and <amrlboro.com> domain names, and that Respondent registered and uses the domain names 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 states that it has used the MARLBORO mark to promote its tobacco products, namely cigarettes. Complainant has registered the MARLBORO mark with the USPTO (e.g. Reg. No. 68,502 registered April 14, 1908). Complainant’s trademark registration satisfies Policy ¶ 4(a)(i), regardless of where Respondent resides. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant next claims that Respondent’s <marlboroisotopes.com> and <amrlboro.com> domain names are confusingly similar to the MARLBORO mark. The <amrlboro.com> domain name features the misspelling of MARLBORO and adds the gTLD “.com.” The <marlboroisotopes.com> domain name adds the gTLD as well as the generic term “isotopes.” The Panel agrees that mere misspellings of trademarks and additions of gTLDs do not distinguish a domain name from a mark under the Policy. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). The Panel further agrees that the addition of the term “isotopes” does not distinguish the <marlboroisotopes.com> domain name from Complainant’s mark in any way. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). Thus, the Panel concludes that both domain names are confusingly similar to the MARLBORO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not known by either of the <marlboroisotopes.com> and <amrlboro.com> domain names. Complainant states that it has not otherwise permitted Respondent to utilize the MARLBORO mark in domain names. The Panel notes that the WHOIS information lists only “Online Management” as the registrant of record for these domain names. The Panel thus concludes that there is no basis for finding that Respondent has ever been commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues that Respondent has caused the <marlboroisotopes.com> and <amrlboro.com> domain names to resolve to generic hyperlink advertisement websites wherein unrelated and various third-party businesses are promoted. The domain names apparently resolve to websites containing click-through hyperlink advertisements to various third-party websites. The Panel agrees that there is nothing bona fide under Policy ¶ 4(c)(i), nor legitimately noncommercial or fair under Policy ¶ 4(c)(iii), about Respondent’s use of these confusingly similar domain names. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is capitalizing on Internet users’ likelihood of confusion when they see monetized hyperlinks of the <marlboroisotopes.com> and <amrlboro.com> domain names and argues that users may believe that Complainant must somehow be associated with these offerings. Complainant concludes that Respondent in turn receives advertising revenues for sending Internet users to these sponsored companies. Both domain names are used to promote hyperlink advertisements. In Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) the panel found that Policy ¶ 4(b)(iv) bad faith may be found through a likelihood of confusion when a domain name was used to host generic hyperlink advertisements. The Panel here agrees that the <marlboroisotopes.com> and <amrlboro.com> domain names were registered and used in bad faith under Policy ¶ 4(b)(iv).
Complainant further claims that Respondent had constructive and actual notice of Complainant’s rights in the MARLBORO mark when registering the <marlboroisotopes.com> and <amrlboro.com> domain names. Due to the fame of Complainant's mark, the Panel concludes Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboroisotopes.com> and <amrlboro.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 14, 2014
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