Philip Morris USA Inc. v. Namecheap / WhoisGuard, Inc.
Claim Number: FA1510001644075
Complainant: Philip Morris USA Inc. of Richmond, Virginia, United States of America.
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondents: Namecheap of Westchester, California, US / WhoisGuard, Inc. of Panama, Panama
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: October 26, 2015
Commencement: October 27, 2015
Default Date: November 11, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The proceedings are related to multiple domain names registered by two different Respondents. The Complainant alleges that the disputed domain names display the identical website and appear to have been registered on the same date by the same individual using different Privacy Protection services. Given that the website available at all of the disputed domain names in fact seems to be individually generated, it is obvious that all of the disputed domain names are under control of the same individual. The Examiner therefore accepts the Complainant’s allegation.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain names are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration no. 68,502 MARLBORO, which was registered on April 14, 1908 covering “cigarettes” as well as documents to show that the trademark is in current use.
The disputed domain names fully incorporate the Complainant’s well-known MARLBORO Mark and are confusingly similar to such mark. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the URS Procedure despite the addition of additional generic terms, such as ”free”, “go”, “fix”, “fun”, or “gift.” In addition, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain names are confusingly similar to the Complainant’s MARLBORO Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain names.
The Complainant contends that it has no business relationship whatsoever with the Respondent, that it has not licensed or otherwise permitted the Respondent to use the MARKBORO Mark or to apply for any domain name incorporating such mark, and that the Respondent cannot establish legitimate rights in the disputed domain name because the Complainant owns exclusive rights in the MARLBORO Mark.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name is used in connection with a website prominently featuring the Complainant’s Marks, stating that the Complainant is giving away free carton of cigarettes and asking Internet users to inter alia share the website available at the disputed domain names on Facebook.
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain names and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain names were registered and are being used in bad faith.
The Complainant states that the Complainant’s MARLBORO Mark is well-known and that the Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites, which is evidence of bad faith registration.
The Examiner is satisfied that, based on the fame of the MARLBORO Mark, the Respondent registered the disputed domain names with full knowledge of such marks. Such finding is supported by the fact that the Respondent’s website prominently features the Complainant’s trademark and refers to the Complainant’s hundredth anniversary. As to bad faith use, by fully incorporating the MARLBORO Mark into the disputed domain names, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out in URS Procedure 1.2.6.3.d.
The Examiner finds that the disputed domain names were registered and are being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<freemarlboro.xyz>, <gomarlboro.xyz>, <imarlboro.xyz>, <marlborofix.xyz>, <marlborofree.xyz>, <marlborofun.xyz>, <marlborogift.xyz>, <marlborolive.xyz>, <marlborolove.xyz>, <marlboronext.xyz>, <marlboros.xyz>, <marlboroz.xyz>, <mymarlboro.xyz>, and <yesmarlboro.xyz>
Mr. Peter Müller, Examiner
Dated: November 16, 2015
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