Philip Morris USA, Inc. v. Muhammad Faisal
Claim Number: FA1705001731169
Complainant is Philip Morris USA, Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter Kaye Scholer LLP, District of Columbia, U.S.A. Respondent is Muhammad Faisal (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <marlboropromo.us> and <marlborofreecoupon.us>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2017; the Forum received payment on May 11, 2017.
On May 11, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlboropromo.us> and <marlborofreecoupon.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@marlboropromo.us, and postmaster@marlborofreecoupon.us. Also on May 12, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it manufactures, markets and sells cigarettes in the United States and elsewhere around the world. Complainant has registered the MARLBORO mark in the United States in 1908. The mark is famous around the world.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s MALBORO mark because both domain names incorporate the MARLBORO mark in its entirety and merely add generic terms, “promo” and “free coupon” respectively, and a country-code top-level domain name (“ccTLD”) “.us.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain names nor has Complainant authorized Respondent to use the MARLBORO mark. Respondent is not making a bona fide offering of goods or services nor a legitimate non-commercial fair use. The disputed domain names resolve to an active website stating “You have been selected to take part in our short survey and get 10 Marlboro Cartons. We have only 165 Cartons remaining so hurry up!” The website prompts Internet visitors to answer questions about their smoking preferences. Thus Respondent is using the disputed domain names to obtain information about misdirected Internet users’ smoking preference with the ultimate goal of marketing to those users for commercial gain. Furthermore, Respondent is using the domain names to capitalize on the association of the MARLBORO mark with Complainant’s tobacco products: the website at the disputed domain names displays the famous MARLBORO word trademark and the principal elements of the MARLBORO trade dress. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. Complainant registered the MARLBORO mark more than a century earlier than Respondent’s registration of the disputed domain names. Respondent had actual or at least constructive notice of Complainant’s rights in the mark. Respondent also prominently displays the MARLBORO mark on its website. Moreover, registration of multiple infringing domain names further supports a finding of bad faith. Finally, Respondent is using the disputed domain names to create an initial interest confusion to attract Internet users for commercial gain. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark MARLBORO and uses it to market cigarettes. The mark is famous
Complainant’s rights in its mark date back to 1908.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names resolve to a web site that displays Complainant’s mark and trade dress, and prompts Internet visitors to answer questions about their smoking preferences.
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.”).
The disputed domain names are confusingly similar to Complainant’s MARLBORO mark because the domain names incorporate the mark in its entirety and merely add generic terms, “promo” and “free coupon”, as well as a ccTLD “.us”. The addition of generic terms and a ccTLD is not sufficient to distinguish the disputed domain names from Complainant’s mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s MARLBORO mark, in the sense of the Policy.
Complainant has not authorized Respondent to use its marks. Further, Respondent is not commonly known by the disputed domain names: the WHOIS information on record lists “Muhammad Faisal” as the registrant name for both of the disputed domain names. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. 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). Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the MARLBORO mark can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names.
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Further, Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent is capitalizing on the famous MARLBORO cigarette mark in order to divert Internet users to a website that seeks to obtain information about Internet users’ smoking habits. Using a domain name to redirect Internet users to a website to solicit completion of a survey is not a bona fide offering of goods or services or a legitimate non-commercial fair use. 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). Therefore, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate non-commercial fair use in the sense of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the confusing similarity of the disputed domain names to attract Internet users for commercial gain by soliciting them to complete a survey. Such use of the disputed domain names supports a finding of bad faith use. See 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.”).
Further, Respondent prominently displays Complainant’s logo on the web sites at the disputed domain names. This is an indication of bad faith use. 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.”); see also Microsoft Corporation and Skype v. Employmentconnect, Claim Number: FA 1442348 (Forum June 14, 2012) (“The Panel concludes that Respondent is attempting to pass itself off as Respondent by creating a website that is calculated to appear to belong to Complainant and uses Complainant’s logo, color scheme, and mark, which the Panel treats as evidence that Respondent registered and uses the disputed domain name in bad faith”); see also Kraft Foods, Inc. v. Unknow, D2005-1153 (WIPO Jan. 1, 2006) (“when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests opportunistic bad faith.”). Therefore the Panel finds that Respondent has registered and is using the disputed domain names in bad faith in the sense of the Policy.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboropromo.us> and <marlborofreecoupon.us> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 6, 2017
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