Philip Morris USA Inc. v GIANLUIGI RONDINELLI / GIANLUIGI RONDINELLI
Claim Number: FA1408001577136
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is GIANLUIGI RONDINELLI / GIANLUIGI RONDINELLI (“Respondent”), represented by Cheryl L. Davis of MENAKER & HERRMANN LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlborom.org> and <marlborom.biz>, registered with Tucows Domains Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2014; the National Arbitration Forum received payment on August 27, 2014.
On August 27, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <marlborom.org> and <marlborom.biz> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 August 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@marlborom.org, as well as postmaster@marlborom.biz. Also on August 27, 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.
On September 16, 2014, Respondent’s submitted its Request for Extension of Time to Respond asking for a stay of 14 days to file its response. On September 17, 2014, the National Arbitration Forum denied Respondent’s request inter alia on grounds that the information provided by Respondent did not constitute the exceptional circumstances required by Rule 5.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
On September 25, 2014, Respondent renewed its September 16, 2014 Request for Extension of Time to Respond. On September 25, 2014, the Panel, in its discretion, denied such request.
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
Complainant contends as follows:
Complainant uses the MARLBORO mark to market and promote its tobacco products. The mark has been registered with the United States Patent and Trademark Office ("USPTO") for quite a number of years.
The <marlborom.org> and <marlborom.biz> domain names are confusingly similar to the MARLBORO mark.
Respondent has absolutely no rights or legitimate interests in the <marlborom.org> and <marlborom.biz> domain names. First, Respondent is not known as the disputed domain names. Second, the domain names have no active use beyond an “under construction” page. Finally, the domain names are simply typosquats on the MARLBORO mark.
Respondent has registered and used the <marlborom.org> and <marlborom.biz> domain names in bad faith. First, Respondent has engaged in a pattern of bad faith registration by holding multiple domain names that feature the MARLBORO mark. Further, Respondent used the <marlborom.org> and <marlborom.biz> domain names to host an essentially inactive website. Further, Respondent had to have been aware of the MARLBORO mark when registering both the <marlborom.org> and <marlborom.biz> domain names. Again, the domain names are simply typosquats on the MARLBORO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MARLBORO mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the MARLBORO trademark.
Respondent uses the at-issue domain names to address domain names having no active use beyond “under construction” pages.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the MARLBORO mark through its USPTO trademark registration of such mark. It is of no consequence that Respondent may operate outside the jurisdiction of the trademark’s registrar. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent forms each at-issue domain names by adding the letter “m” to Complainant’s MARLBORO trademark and then appending the top-level domain name “.org” or “.biz” to the resulting string. These alterations to Complainant’s MARLBORO trademark are insufficient to distinguish either at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <marlborom.org> and <marlborom.biz> domain names are each confusingly similar to Complainant’s MARLBORO mark pursuant to Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain name lists “GIANLUIGI RONDINELLI” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by either <marlborom.org> or <marlborom.biz>. Therefore, the Panel finds that Respondent is not commonly known by either of the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent uses the at-issue domain names for no active purpose beyond addressing an “under construction” page. Further, Respondent holds the domain names to either to typosquat on the MARLBORO mark or more likely to relate to a commonly known fictitious product called “Marlboro M.” The at-issue domain names are merely Complainant’s MARLBORO mark plus the letter “m” with a top level domain name appended and without more the domain names appear to be registered to inappropriately capitalize on the MARLBORO trademark. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were registered and used in bad faith. As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy as to each of the at-issue domain names.
Complainant has maintained a UDRP action against Respondent for a “.us” domain name. Coupled with the instant action a pattern emerges which suggests Respondent’s bad faith regarding the at-issue domain names pursuant to 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)).
Further, Respondent used the <marlborom.org> and <marlborom.biz> domain names to host an essentially inactive website. Respondent’s inactive holding of these trademark brandishing domain names indicates Policy ¶ 4(a)(iii) bad faith since there is no evidence of good faith registration in the record. 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).
Additionally, Respondent registered the <marlborom.org> and <marlborom.biz> domain names knowing that Complainant had trademark rights in the MARLBORO mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt inclusion of such trademark in forming the at-issue domain names. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to exploit their trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and uses the <marlborom.org> and <marlborom.biz> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See 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").
Finally, Complainant urges that Respondent’s <marlborom.org> and <marlborom.biz> domain names indicate typosquatting on their face. However, the panel is reluctant to make such a finding in light of the fact that “marlborom” is not a common misspelling or mistyping of the MARLBORO mark and because there is a reasonable alternative motive in registering the domain names which is more closely aligned with the facts. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with a targeted trademark and thereby be directed to a web presence controlled by the domain name’s registrant. Here Respondent simply adds a letter “m” into Complainant’s trademark to form each of the domain names. But as mentioned above, it is not clear that Respondent’s intent was to typosquat since the domain names do not appear to be common misspellings or mistypings of the MARLBORO mark. Moreover there is a likelihood that Respondent may have desired that the domain names refer to a much bandied about commonly known fictitious cigarette product called “Marlboro M.” Therefore although Respondent’s typosquatting would in itself be evidence of Policy ¶ 4(a)(iii) bad faith, for the foregoing reasons the Panel declines to find typosquatting. See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to 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 <marlborom.org> and <marlborom.biz> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 28, 2014
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