Philip Morris USA Inc. v. Rohan Arora
Claim Number: FA1711001757557
Complainant is Philip Morris USA Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Rohan Arora (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboro-giveaway.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 November 7, 2017; the Forum received payment on November 7, 2017.
On November 8, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlboro-giveaway.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@marlboro-giveaway.us. Also on November 8, 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 November 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 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant manufactures and retails tobacco and tobacco-related goods and services. Complainant uses the MARLBORO mark in conjunction with its business practices. Complainant registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502, registered Apr. 14, 1908).
2. Respondent’s <marlboro-giveaway.us>[1] is confusingly similar to Complainant’s MARLBORO mark because it incorporates the mark in its entirety, adding a hyphen, the generic term “giveaway,” and the “.us” country code top level domain (“ccTLD”).
3. Respondent does not have rights or legitimate interests in <marlboro-giveaway.us>. Respondent does not own a trade or service mark identical to the domain name. Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the MARLBORO mark in any regard.
4. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain that does not mislead internet users or tarnish Complainant’s MARLBORO mark. Respondent’s <marlboro-giveaway.us> resolves to an inactive webpage.
5. Respondent registered or is using <marlboro-giveaway.us> in bad faith. Respondent has registered multiple domain names infringing on the marks of third parties, thereby showing a pattern of bad faith registrations. The domain name resolves to an inactive website with no demonstrable preparations for use. Respondent registered <marlboro-giveaway.us> with actual knowledge of Complainant and its rights to the MARLBORO mark.
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 <marlboro-giveaway.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.
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 manufactures and retails tobacco and tobacco-related goods and services. Complainant uses the MARLBORO mark in conjunction with its business practices. Complainant has registered the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502, registered Apr. 14, 1908). Registration of a mark with the USPTO is sufficient to establish rights to a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel determines that Complainant’s registrations with the USPTO are sufficient to show rights in the MARLBORO mark.
Complainant asserts that Respondent’s <marlboro-giveaway.us> is confusingly similar to Complainant’s MARLBORO mark because it incorporates the mark in its entirety, adding a hyphen, the generic term “giveaway,” and the “.us” ccTLD. The addition of a generic term and top level domain does not differentiate a domain name from a mark in which a complainant has rights. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Likewise, the addition of a hyphen to the mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel concludes that Respondent’s <marlboro-giveaway.us> is confusingly similar to Complainant’s MARLBORO mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <marlboro-giveaway.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 argues that Respondent is not commonly known by the <marlboro-giveaway.us> domain name. Furthermore, Complainant contends it has not authorized or licensed Respondent to use the MARLBORO mark in any regard. WHOIS information associated with this case identifies Respondent as “Rohan Arora.” Based on the evidence in the record, the Panel concludes Respondent is not commonly known by the domain name. The respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by that name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Therefore, because nothing in the record demonstrates Respondent is commonly known by the domain name or that Complainant authorized Respondent’s use of the MARLBORO mark, the Panel determines that Respondent is not commonly known by <marlboro-giveaway.us>.
Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name that does not mislead internet users or tarnish Complainant’s MARLBORO mark. Complainant demonstrates that Respondent’s <marlboro-giveaway.us> resolves to an inactive webpage. “[The Policy] requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Thus, the Panel finds that Respondent’s use of the domain name shows a lack of rights and legitimate interests in <marlboro-giveaway.us> pursuant to Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and is using <marlboro-giveaway.us> in bad faith. Complainant has offered evidence that Respondent has registered multiple domain names infringing on the marks of third parties, thereby showing a pattern of bad faith registrations. A pattern of registering domain names in bad faith exists where a respondent previously registered domain names incorporating well-known third party trademarks. Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Complainant has established Respondent’s bad faith.
Next, Complainant has produced evidence that the <marlboro-giveaway.us> domain name resolves to an inactive website with no demonstrable preparations for use, further showing bad faith use. “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015); see Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Thus, the Panel finds that Respondent’s inactive use of the <marlboro-giveaway.us> domain shows bad faith use pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered <marlboro-giveaway.us> with actual knowledge of Complainant and its rights to the MARLBORO mark. Complainant contends that in light of the fame, notoriety, and long-standing use of Complainant's MARLBORO mark, it is inconceivable that Respondent could have registered the domain name without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel agrees.
The Panel finds 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 <marlboro-giveaway.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 5, 2017
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