Philip Morris USA Inc. v. domain registration
Claim Number: FA1509001636389
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is domain registration (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2015; the Forum received payment on September 3, 2015.
On September 4, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2015 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@marlboromarijuanacigarettes.us and postmaster@medicalmarijuanamarlborocigarettes.us. Also on September 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2015, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD 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 usTLD Policy, usTLD Rules, the 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
1. Complainant uses the MARLBORO mark in connection with the manufacture, marketing, and sale of cigarettes. 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), establishing Policy ¶ 4(a)(i) rights. Respondent’s <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names are confusingly similar to the MARLBORO mark as they merely add generic terms “medical,” “marijuana,” and/or “cigarettes” and the country-code top-level domain (“ccTLD”) “.us.
2. Respondent has no rights or legitimate interests in the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names. Respondent is not commonly known by the disputed domain names per the WHOIS information of record and Respondent’s failure to submit supporting evidence. Further, Respondent has not operated the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent has failed to make an active use of the resolving websites.
3. Respondent has registered or used the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names in bad faith under Policy ¶ 4(a)(iii). Respondent has registered multiple domain names in the instant proceeding, evincing a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Next, Respondent’s inactive holding of the domains and actual/constructive knowledge indicate bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii).
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 Domain Registration of Flushing, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain names were registered on or about May 7, 2015.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses the MARLBORO mark in connection with the manufacture, marketing, and sale of cigarettes. Complainant has registered the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502, registered April 14, 1908), and argues that its registrations establish Policy ¶ 4(a)(i) rights. Prior panels have agreed with similar arguments. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel here finds that Complainant has established Policy ¶ 4(a)(i) rights pursuant to its USPTO registrations of the MARLBORO mark.
Complainant alleges that Respondent’s <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names are confusingly similar to the MARLBORO mark as they merely add generic terms “medical,” “marijuana,” and/or “cigarettes” and the ccTLD “.us.” Past panels have found such additions insufficient in overcoming a confusing similarity analysis. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel here finds that Respondent’s <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names are confusingly similar to the MARLBORO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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), 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 that Respondent has no rights or legitimate interests in the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names. Complainant further asserts that Respondent is not commonly known by the disputed domain names based on the WHOIS information of record and Respondent’s failure to submit supporting evidence. In light of Respondent’s failure to submit a formal response or any supporting evidence, the Panel finds the Respondent has no rights or legitimate interests in the disputed domains under Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent has not operated the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. The Panel notes that Respondent has failed to make an active use of the resolving websites. Past panels have found a lack of rights where Respondents have failed to make an active use of disputed domains. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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.
Complainant has proven this element.
Complainant contends that Respondent has registered or used the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names in bad faith under Policy ¶ 4(a)(iii). The Panel notes that Respondent has registered multiple domain names in the instant proceeding, which supports a finding of bad faith registrations under Policy ¶ 4(b)(ii). Previous panels have found multiple registrations demonstrate Policy ¶ 4(b)(ii) bad faith. See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel here finds that Respondent has registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Complainant additionally argues that Respondent’s inactive holding of the <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names demonstrates bad faith under Policy ¶ 4(a)(iii). The Panel recalls Complainant has provided documentary evidence that demonstrates each domain resolves to a page displaying the message, “Website Coming Soon!” Previous panels have found bad faith where a respondent has failed to make a use of a disputed domain name. 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). The Panel here finds Respondent’s registration and use in bad faith in light of Respondent’s failure to make any active use of either domain pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As 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 <marlboromarijuanacigarettes.us> and <medicalmarijuanamarlborocigarettes.us> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 19, 2015
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