Philip Morris USA Inc. v. sdf sdf / ad sfd v
Claim Number: FA1401001536998
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is sdf sdf / ad sfd v (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapmarlborocigarettesnet.com>, registered with Xin Net Technology Corporation.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2014; the National Arbitration Forum received payment on January 6, 2014. The Complaint was submitted in both Chinese and English.
On January 2, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cheapmarlborocigarettesnet.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 13, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 3, 2014 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@cheapmarlborocigarettesnet.com. Also on January 13, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Policy ¶ 4(a)(i): Complainant’s Rights and the Confusing Similarity of the Domain Name
Policy ¶ 4(a)(ii): Respondent’s Lack of Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. 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 may be conducted in English.
Complainant, Philip Morris USA Inc., of Richmond, VA, USA, is the owner of USA registrations for the MARLBORO trademark which it has used continuously since at least as early as 1908 in association with the manufacturing, marketing and selling of cigarettes. Complainant also owns the <marlboro.com> website which is utilized to provide additional information and special offers related to its products.
Respondent is identified as sdf sdf / ad sfd v, of Hebeisheng, China. Respondent’s registrar’s address is indicated as Beijing, China. Respondent registered the <cheapmarlborocigarettesnet.com> domain name on or about June 25, 2013.
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(e), 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 (Nat. Arb. 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 claims that it has long used the MARLBORO mark in connection with the sale of tobacco goods. Complainant has registered the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered on April 14, 1908). The Panel finds that USPTO registration is sufficient evidence to show Policy ¶ 4(a)(i) rights. See The Toronto-Dominion Bank v. Majid Majidi / N/A, FA 1536889 (Nat. Arb. Forum Jan. 30, 2014) (“Panels have frequently found that providing evidence of a registration with a recognized trademark authority [such as the USPTO] is sufficient to establish rights in a given mark.”).
Complainant next argues that Respondent’s <cheapmarlborocigarettesnet.com> domain name is confusingly similar to the MARLBORO mark. Complainant states that Respondent adds the terms “cheap” and “net,” which are generic and of little distinctive value. Complainant Respondent also includes the term “cigarettes,” which describes a bulk of the goods sold under the MARLBORO mark. Complainant claims that the inclusion of the gTLD “.com” is not relevant. The Panel finds that the addition of descriptive terms such as “cigarette” are not relevant here. See H-D U.S.A., LLC v. Steffen Hönl, FA 1533582 (Nat. Arb. Forum Jan. 8, 2014) (“[T]he Panel holds that the added term “jackets” is obviously connected to the motorcycle apparel offered by Complainant under its HARLEY-DAVIDSON mark.”). The Panel also finds that the addition of generic terms and a gTLD is not enough to defeat confusing similarity. See Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy, FA 1535107 (Nat. Arb. Forum Jan. 29, 2014) (holding that the addition of the gTLD “.com” and the terms “of” and “columbia” caused confusing similarity). The Panel holds that the <cheapmarlborocigarettesnet.com> domain name is confusingly similar to the MARLBORO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (Nat. Arb. 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). The Complainant has met this burden.
Complainant argues that Respondent has never been known by the domain name. Complainant claims that it has not otherwise licensed or authorized Respondent to utilize the MARLBORO mark in domain names. The Panel notes that the <cheapmarlborocigarettesnet.com> domain name’s listed registrant of record, according to WHOIS, is “sdf sdf / ad sfd v.” The Panel finds that Respondent has never been known by the domain name under Policy ¶ 4(c)(ii). See Chan Luu Inc. v. greedka greedka, FA 1534235 (Nat. Arb. Forum Jan. 8, 2014) (finding that no evidence in the record, including the WHOIS information that the registrant was “greedka greedka,” could establish that the respondent was known by the domain name).
Complainant claims that Respondent is using the domain name to send Internet users through to a Google web search page, as evidenced by Exhibit E. The Panel finds that appropriating the <cheapmarlborocigarettesnet.com> domain name for purposes of sending Internet users to a Google search page does not vest Respondent with Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Quick Chek Corp. v. Dynamo.com LLC c/o Dynamo.com Whois Protection, FA 1329173 (Nat. Arb. Forum July 14, 2010) (finding that the domain name did not give rise to a Policy ¶ 4(c)(iii) legitimate noncommercial fair use, or Policy ¶ 4(c)(i) bona fide offering, when the domain name was used to promote an unrelated website).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent’s only use for the <cheapmarlborocigarettesnet.com> domain name is to shuttle Internet users to a Google web search results page. Complainant claims that this is tantamount to an inactive use of the domain name, as it is merely forwarding Internet users on to another resolving website. The Panel notes that an inactive use of a domain name generally occurs only when there is absolutely no use of the domain name at all (e.g., resolving to an error message). However, the Panel further notes that Policy ¶ 4(a)(iii) bad faith may be shown here by Respondent’s use of the domain name to send Internet users through to a Google search page, as Respondent is appropriating this confusingly similar domain name for some purpose over which Complainant has no control. See, e.g., Greektown Casino, LLC v. oded keinan / 3 nutley terrace, FA 1528849 (Nat. Arb. Forum Dec. 20, 2013) (“A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where . . . there is no evidence that the respondent could have registered and used the disputed domain name for a non-infringing purpose.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapmarlborocigarettesnet.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 20, 2014
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