Philip Morris USA Inc. v. Alina Bagautdinova
Claim Number: FA1402001545528
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Alina Bagautdinova (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborocoupons.info>, registered with Wild West Domains, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2014; the National Arbitration Forum received payment on February 25, 2014.
On February 25, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <marlborocoupons.info> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 February 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@marlborocoupons.info. Also on February 26, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant manufactures, markets, and sells cigarettes under the MARLBORO trademark. Complainant and its predecessors have used the mark since 1883, and Complainant asserts that the mark has become famous. Complainant owns various U.S. trademark registrations for the mark. Complainant states that it provides paper and electronic coupons to adult smokers who sign up to receive them, and the coupons state that resale or transfer of the coupons is prohibited.
Complainant contends that the disputed domain name <marlborocoupons.info>, registered by Respondent, is confusingly similar to its MARLBORO mark. The domain name resolves to a website that appears to show Google search results that include links to sites making unauthorized resales of Marlboro coupons, in addition to a link to Complainant’s website. Complainant alleges that Respondent established this website in an attempt to trade on the goodwill of Complainant and its MARLBORO mark. Complainant alleges further that Respondent’s use of the disputed domain name creates a form of initial interest confusion, attracting Internet users based upon the MARLBORO mark. Complainant asserts that Respondent has no connection or affiliation with Complainant, and has never been known by a name incorporating the MARLBORO mark. On these grounds Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant asserts that it is inconceivable that the disputed domain name could have been registered without knowledge of Complainant’s trademark rights, and asserts further that Respondent had at least constructive knowledge of those rights. Complainant also notes that the disputed domain name was registered through a privacy service in order to mask the actual registrant’s true identity. Based upon these allegations and the manner in which the domain name is being used, Complainant contends that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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(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.”).
The disputed domain name combines Complainant’s famous trademark with the generic term “coupons” and the top-level domain suffix “.info”. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Lorillard Technologies, Inc. v. Dickson, D2013-2183 (WIPO Mar. 9, 2014) (finding <blucigcoupons.org> confusingly similar to BLU ECIGS and BLU CIGS); Lorillard Licensing Co. v. PPA Media Services / Ryan G Foo, FA 1511024 (Nat. Arb. Forum Sept. 9, 2013) (finding <newportcigarettecoupons.com> confusingly similar to NEWPORT); Philip Morris USA Inc. v. Gu Bei, D2010-0054 (WIPO Feb. 24, 2010) (finding <marlborocoupons.com> identical or confusingly similar to MARLBORO); Sears Brands, LLC v. Ganesh Sekar / Cybernet Slash, FA 1376389 (Nat. Arb. Forum Apr. 11, 2011) (finding <kmartcoupons.info> confusingly similar to KMART). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has made its prime facie case, and Respondent has failed to come forward with any evidence of rights or legitimate interests. The Panel finds that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent registered a domain name that combines Complainant’s mark with a generic term related to Complainant’s business. The Panel infers from the circumstances that Respondent was aware of Complainant’s mark and intentionally targeted the mark. Respondent has used the domain name to direct Internet users to sites from which Respondent presumably receives commissions or other commercial benefit, trading on Complainant’s mark. Such use is indicative of bad faith under the Policy. See, e.g., Lorillard Technologies, Inc. v. Dickson, supra; Lorillard Licensing Co. v. PPA Media Services / Ryan G Foo, supra; Philip Morris USA Inc. v. Gu Bei, supra.
Complainant also alleges, without evidence or explanation, that the disputed domain name was registered through a privacy service rather than in the name of the actual registrant. The Panel has disregarded this unsupported claim. Similarly, the Panel has disregarded the Complainant’s arguments regarding constructive knowledge, being of the view that actual knowledge of a Complainant or its mark is essential for a finding of bad faith registration.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborocoupons.info> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 24, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page