Philip Morris USA Inc. v. shilei
Claim Number: FA1703001724028
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is shilei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborolightsclas.com>, registered with 22net, 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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017. The Complaint was submitted in both English and Chinese.
On March 28, 2017, 22net, Inc. confirmed by e-mail to the Forum that the <marlborolightsclas.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the names. 22net, Inc. has verified that Respondent is bound by the 22net, 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 April 3, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 24, 2017 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@marlborolightsclas.com. Also on April 3, 2017, the Chinese language 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 April 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <marlborolightsclas.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
2. Respondent does not have any rights or legitimate interests in the <marlborolightsclas.com> domain name.
3. Respondent registered and uses the <marlborolightsclas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris USA, Inc., manufactures, markets, and sells cigarettes under its famous MARLBORO mark. Complainant holds registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 68,502, registered Apr. 14, 1908).
Respondent registered the <marlborolightsclas.com> domain name on September 2, 2016, and it currently resolves to an inactive website stating “This site cannot be reached.”
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 (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 Panel finds that Complainant’s registration of the MARLBORO mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <marlborolightsclas.com> domain name the MARLBORO mark in its entirety, merely adding the generic terms “lights” and “clas” (the latter term being a misspelling of “class”) as well as the gTLD “.com.” Addition of generic terms and a gTLD to a mark in order to form a domain name is insufficient to distinguish that domain name from the mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Complainant argues that the confusion is only increased by the fact that Complainant used to offer a product called “Marlboro Lights” and has been subject to related class action lawsuits. The Panel agrees and finds that Respondent’s <marlborolightsclas.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in <marlborolightsclas.com> as Respondent is not commonly known by the disputed domain name. Complainant has not granted Respondent any license, authorization or consent to use the MARLBORO mark in a domain name. The WHOIS information of record identifies Respondent as “shilei.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant further argues that Respondent is not using the <marlborolightsclas.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name does not resolve to an active webpage. Failure to make an active use of a disputed domain name can evince a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and (iii).
The Panel notes that the disputed domain name at one time resolved to a parked page displaying third party links, some of which compete with Complainant’s business. This also demonstrates a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant shows that Respondent has registered multiple domain names infringing on the MARLBORO mark and the ALTRIA mark owned by Complainant’s parent company, which are subject to separate, currently pending proceedings. Complainant argues that this shows a pattern of bad faith registration and use, and therefore Respondent’s registration and use of the <marlborolightsclas.com> domain name is also in bad faith. The Panel agrees and finds bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Complainant also contends that Respondent’s use of Complainant’s famous mark in the <marlborolightsclas.com> domain name creates initial interest confusion. The use of a sufficiently famous mark in a domain name can cause initial interest confusion and be found to evince opportunistic bad faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). The Panel finds that the MARLBORO mark is sufficiently famous such that use of it in a domain name evinces opportunistic bad faith.
Respondent’s inactive holding of the disputed domain name also demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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).
Complainant contends that in light of the fame and notoriety of Complainant's MARLBORO mark, it is inconceivable that Respondent could have registered the <marlborolightsclas.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, additional evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied 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 <marlborolightsclas.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 1, 2017
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