Philip Morris USA Inc. v. Usama / Usam
Claim Number: FA1704001729163
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is Usama / Usam (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborocoupons.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On May 1, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <marlborocoupons.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@marlborocoupons.us. Also on May 9, 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 June 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). 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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures, markets, and sells cigarettes in the United States under the famous MALBORO mark. Complainant has used the mark in connection with cigarette distribution since 1883. Complainant registered its MARLBORO mark with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 68,502, registered Apr. 14, 1908), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <marlborocoupons.us> is identical or confusingly similar to Complainant’s mark because it merely appends the generic term “coupons” and the country code top-level domain (“ccTLD”) “.us”.
Respondent has no rights or legitimate interests in the <marlborocoupons.us> domain name. Complainant has not licensed or otherwise authorized Respondent to use its MARLBORO mark. Respondent is not commonly known by the disputed domain name. Furthermore, Respondent’s use of the domain name to pass itself off as Complainant, as well as offering Complainant’s products as a prize, fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the <marlborocoupons.us> domain name in bad faith. Respondent, by prominently displaying Complainant’s marks and designs, attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by diverting Complainant’s customers to Respondent’s site. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the MARLBORO mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of Complainant’s rights in the MARLBORO mark. Finally, Respondent’s actual knowledge of Complainant’s rights in the mark at the time of registration further shows bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris USA Inc., manufactures, markets, and sells cigarettes in the United States under the famous MALBORO mark. Complainant has used the mark in connection with cigarette distribution since 1883. Complainant has rights in the MARLBORO mark through registration with the USPTO (e.g., Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s <marlborocoupons.us> is confusingly similar to Complainant’s mark.
Respondent, Usama / Usam, registered the <marlborocoupons.us> domain name on March 25, 2017.
Respondent has no rights or legitimate interests in the <marlborocoupons.us> domain name. Respondent uses the domain name to pass itself off as Complainant.
Respondent has registered and is using the <marlborocoupons.us> 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 or 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 has rights in the MARLBORO mark under Policy ¶ 4(a)(i) through registration with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s<marlborocoupons.us> is confusingly similar to Complainant’s Marlboro mark because it simply appends the generic term “coupons” and the ccTLD “.us”.
Respondent has no rights or legitimate interests in the <marlborocoupons.us> domain name. Complainant has not authorized Respondent to use its MARLBORO mark. The WHOIS information for the <marlborocoupons.us> domain name lists “USAMA” as the registrant. See 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); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Therefore, Respondent is not commonly known by the <marlborocoupons.us> domain name.
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the <marlborocoupons.us> domain name. Rather, the resolving webpage prominently displays Complainant’s mark along with a series of survey questions which concludes with an offer for free Marlboro products on the condition that the Internet user sends the results to 15 friends. A respondent’s use of a domain name and resolving website to pass itself off as a complainant or complainant’s affiliate cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent disrupts Complainant’s business by attempting to divert potential customers away from Complainant’s true MARLBORO site. Respondent prominently displays the MARLBORO mark on the resolving webpage and offers promotions for Complainant’s products. Such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Similarly, Respondent registered and uses the <marlborocoupons.us> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the MARLBORO mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent had actual knowledge of Complainant’s MARLBORO mark when registering the <marlborocoupons.us> domain name. Therefore, Respondent registered and uses the disputed domain name in 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).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborocoupons.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 19, 2017
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