Philip Morris USA Inc. v. Ernie Villa
Claim Number: FA1604001668607
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is Ernie Villa (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboromedicinalfarms.com>, <marlboroedibles.com>, <marlboronexus.com>, and <philipmorrisfarms.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 4, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <marlboromedicinalfarms.com>, <marlboroedibles.com>, <marlboronexus.com>, and <philipmorrisfarms.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 April 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2016 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@marlboromedicinalfarms.com, postmaster@marlboroedibles.com, postmaster@marlboronexus.com, postmaster@philipmorrisfarms.com. Also on April 6, 2016, 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 April 28, 2016, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures, markets, and sells cigarettes in the United States. Complainant and its predecessors in interest have used the MARLBORO mark in connection with this business since 1883. The MARLBORO mark is registered in the United States. Complainant also claims trademark rights in PHILIP MORRIS arising at common law as a result of Complainant’s longstanding use of the corresponding trade name, stating that the public associates PHILIP MORRIS with Complainant and its products, and noting that Complainant’s common-law rights in PHILIP MORRIS have been recognized in several previous proceedings under the Policy. Complainant asserts that both MARLBORO and PHILIP MORRIS are famous.
Respondent registered the disputed domain names <marlboromedicinalfarms.com>, <marlboroedibles.com>, <marlboronexus.com>, and <philipmorrisfarms.com> on January 26, 2016. Each of the domain names resolves to a “website coming soon” message. Complainant alleges that Respondent has no connection with Complainant, its affiliates, or its products; has never been known by any name that incorporates Complainant’s marks; and has not been licensed or authorized to use the marks. Complainant further states that Respondent has registered three other domain names incorporating ALTRIA, a mark owned by Complainant’s parent company, and that these other domain names are the subject of a separate proceeding under the Policy.
Complainant contends, based on these grounds, that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of each of the disputed domain names; and that each of the disputed domain names 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(f), 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.”).
Three of the disputed domain names correspond to Complainant’s MARLBORO mark, adding various generic terms and the “.com” top-level domain; the fourth corresponds in the same manner to Complainant’s PHILIP MORRIS mark. These additions do not diminish the similarity between the domain names and Complainant’s marks. See, e.g., Philip Morris USA Inc. v. Lance Williams, D2015-0546 (WIPO May 27, 2015) (finding <marlboromarihuana.com> and <phillipmorrismarihuana.com> confusingly similar to MARLBORO and PHILIP MORRIS); Margaritaville Enterprises, LLC v. KleenHands, FA 1221824 (Nat. Arb. Forum Oct. 7, 2008) (finding <margaritavillefarms.com> confusingly similar to MARGARITAVILLE). The Panel finds that each of the disputed domain names is 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 names incorporate Complainant’s marks without authorization, and Respondent does not appear to have made any active use of the domain names. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any 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 each of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct.” 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.”
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. Standard Bank of South Africa Ltd. v. Brian White, FA 1663527 (Forum Mar. 31, 2016). Furthermore, a domain name may be so closely connected with a well-known trademark that its very use suggests opportunistic bad faith. Id.
Respondent does not appear to have made any active use of the disputed domain names. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain names intending to use them in a manner calculated to create and exploit confusion with Complainant’s marks, most likely either by selling the domain names (paragraph 4(b)(i)) or by using them to attract Internet users seeking Complainant (paragraph 4(b)(iv)), and that Respondent is maintaining the domain names for that purpose. See, e.g., Zoetis Inc. & Zoetis Services LLC v. Laurent Bertier, FA 1666519 (Forum Apr. 18, 2016) (finding bad faith registration and use in similar circumstances). The Panel further considers Respondent’s registration of at least seven domain names incorporating three different trademarks owned by Complainant or its parent company indicative of a pattern of bad faith registrations under paragraph 4(b)(ii).
For the foregoing reasons, the Panel finds that the disputed domain names were registered and have been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboromedicinalfarms.com>, <marlboroedibles.com>, <marlboronexus.com>, and <philipmorrisfarms.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 29, 2016
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