Philip Morris USA Inc. v. Muhammad Faisal
Claim Number: FA1511001649579
Complainant is Philip Morris USA Inc. ("Complainant"), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is Muhammad Faisal ("Respondent"), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <malboros.com>, registered with eNom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 23, 2015.
On November 24, 2015, eNom, Inc. confirmed by email to the Forum that the <malboros.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@malboros.com. Also on November 24, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 December 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 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 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 has used MARLBORO and related trademarks in connection with tobacco products and related goods and services since 1908. Complainant owns numerous U.S. registrations for these marks.
Respondent registered the disputed domain name <malboros.com> in October 2015, along with a second domain name, <marlborofilter.xyz>, which is the subject of a separate Uniform Rapid Suspension proceeding. These domain names resolve to websites that contain Complainant's marks and state "Marlboro is giving away free carton of Cigarette to celebrate their 100th Aniversary." Complainant alleges that Respondent is either offering Complainant's products for sale or is using such an offer to profit from a "pay-per-click" scheme. Complainant states that it has never authorized Respondent's use of its marks; that it has no business relationship with Respondent; and that Respondent has never been commonly known by Complainant's marks.
Complainant contends that the disputed domain name is confusingly similar to its MARLBORO mark; that Respondent has no rights or legitimate interests with respect to the disputed domain name; that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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 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 disputed domain name is comprised of the plural form of the Complainant's registered MARLBORO mark, with the first letter "R" omitted and the letter “s” and the ".com" top-level domain suffix appended thereto. These modifications do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Philip Morris USA Inc. v. Isaac Goldstein, FA 1539350 (Nat. Arb. Forum Feb. 21, 2014) (finding <mrlboro.com> confusingly similar to MARLBORO); Philip Morris USA Inc. v. Juraj Svancara, FA 1522215 (Nat. Arb. Forum Nov. 11, 2013) (finding <malboro.info> and <malboro.org> confusingly similar to MARLBORO); Philip Morris USA Inc. v. Sylvester Spinetta, D2004-0317 (WIPO June 13, 2004) (finding <marlboros.com> identical or confusingly similar to MARLBORO). The Panel therefore considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its only apparent use has been to attract Internet users to click on presumably fraudulent offers. See, e.g., John Stamos v. Ryan G Foo / PPA Media Services / Domain Admin / Whois Privacy Corp., FA 1618847 (Forum June 16, 2015) (finding lack of rights or legitimate interests based upon use of domain name for fake virus warning and pop-up windows promoting illegal phishing scheme). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name containing Complainant's mark (with a typographical error), and is using the domain name to promote a fraudulent scheme aimed at Internet users seeking Complainant's products. Such conduct is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <malboros.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 23, 2015
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