Philip Morris USA Inc. v. Mike Tomson
Claim Number: FA1704001729135
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter Kaye Scholer LLP, District of Columbia, USA. Respondent is Mike Tomson (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborosmoke.us>, registered with NameCheap, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On April 27, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlborosmoke.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 May 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@marlborosmoke.us. Also on May 1, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the MARLBORO mark, used in connection with the manufacture and sale of cigarettes. Complainant owns registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO") (e.g., Reg. No. 68,502 registered 1908).
2. Respondent’s <marlborosmoke.us>[1] is confusingly similar to Complainant’s MARLBRO mark because it incorporates Complainant’s mark in its entirety, and adds a term “smoke” which references Complainant’s product. Further, the domain name adds the generic top-level domain (“gTLD”) “.com.”
3. Respondent does not have any rights or legitimate interests in <marlborosmoke.us>. Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use its MARLBORO mark in any way.
4. Further, Respondent misappropriates Complainant’s mark to confuse Internet users and induce them to take a survey to obtain information from Internet users with the claimed reward of Complainant’s products. Respondent may be soliciting information gathered from potential customers to whom it may then offer to sell Complainant’s cigarettes for commercial gain. Respondent’s use therefore does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use.
5. Respondent registered and uses <marlborosmoke.us> in bad faith. Inclusion of surveys with the ultimate aim of marketing to those Internet users disrupts Complainant’s business under Policy ¶ 4(b)(iii), and Respondent presumably profits from this confusing use under Policy ¶ 4(b)(iv).
6. Due to the fame associated with Complainant’s mark and Respondent’s use of the domain name, Respondent had actual knowledge of the MARLBORO mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARLBORO mark. Respondent’s domain name is confusingly similar to Complainant’s MARLBORO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <marlborosmoke.us> domain name and that Respondent registered and uses the domain name 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.
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(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.”).
Complainant owns registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO") (e.g., Reg. No. 68,502 registered 1908). Although Respondent resides or operates in Canada, a complainant need not own a registration in a respondent’s country of operation. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, Complainant has rights in the MARLBORO mark within the meaning of Policy ¶ 4(a)(i) because Complainant has valid trademark registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges Respondent’s <marlborosmoke.us> is confusingly similar to Complainant’s MARLBRO mark because it incorporates Complainant’s mark in its entirety, and adds a term, “smoke,” which references Complainant’s product, as well as the gTLD “.com.” First, the addition of a generic or descriptive term to a trademark in a domain name does not sufficiently differentiate the domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <marlborosmoke.us> is confusingly similar to Complainant’s MARLBRO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <marlborosmoke.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent does not have any rights or legitimate interests in <marlborosmoke.us>. Complainant contends that Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use its MARLBORO mark in any way. The WHOIS record for the domain names lists “Mike Tomson” as the domain name registrant. The Panel may consider the WHOIS record under the circumstances of this case. See Braun Corp. v. Loney, FA 699652 (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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent is not authorized by Complainant to use the MARLBORO mark, and neither the WHOIS information nor other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by <marlborosmoke.us> under Policy ¶ 4(c)(iii).
The record supports Complainant’s contention that Respondent misappropriates Complainant’s mark to confuse Internet users and induce them to take a survey to obtain information with the claimed reward of Complainant’s products. Use by a respondent of a domain name to resolve to surveys or to solicit information from Internet users does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses <marlborosmoke.us> in bad faith. Specifically, Complainant asserts that the inclusion of surveys with the ultimate aim of marketing to unsuspecting Internet users disrupts Complainant’s business under Policy ¶ 4(b)(iii), and Respondent presumably profits from this confusing use under Policy ¶ 4(b)(iv). The Panel agrees. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (“Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.”).
Finally, Complainant claims Respondent had actual knowledge of Complainant and Complainant’s rights in the MARLBORO mark at the time it registered and subsequently used the <marlborosmoke.us> domain name. Complainant contends that in light of the fame and notoriety of Complainant's MARLBORO mark, it is inconceivable that Respondent could have registered the <marlborosmoke.us> domain name without actual knowledge of Complainant's rights in the mark. Because the domain name includes Complainant’s mark in its entirety the Panel concludes that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name which is 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborosmoke.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 7, 2017
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