Philip Morris USA Inc. v. Stefan Raileanu
Claim Number: FA1403001548688
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Stefan Raileanu (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bfmarlboro.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2014; the National Arbitration Forum received payment on March 14, 2014.
On March 17, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bfmarlboro.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@bfmarlboro.com. Also on March 17, 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.
A timely Response was received and determined to be complete on March 17, 2014.
On March 24, 2014, Complainant submitted an Additional Submission which is compliant.
On March 25, 2014, Respondent submitted an Additional Submission which is compliant.
On March 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
a. Complainant has manufactured, marketed, and sold cigarettes in the United States since 1883.
b. Complainant has registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered April 14, 1908).
c. The <bfmarlboro.com> domain name is confusingly similar to Complainant’s MARLBORO mark.
i. Respondent’s domain name simply adds random letters to Complainant’s mark.
ii. The addition of “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
2. Policy ¶ 4(a)(ii)
a. Respondent was never known by any name or trade name that incorporates the word “Marlboro.”
i. Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO mark.
ii. Respondent is not a licensee of Complainant and has not obtained permission, either express or implied, from Complainant to use the MARLBORO mark, or any domain names incorporating such mark.
b. Respondent uses the disputed domain name to resolve to a website that asks and allows Internet users to test and report problems for a computer program called Joomla (purportedly a content management system, which enables users to build websites and online applications).
3. Policy ¶ 4(a)(iii)
a. Respondent’s registration and use of the <bfmarlboro.com> domain name creates a form of initial interest confusion, which attracts Internet users to Respondent’s website based on the unauthorized use of the MARLBORO mark.
b. Respondent registered the <bfmarlboro.com> domain name with full knowledge of Complainant’s rights in the MARLBORO mark.
i. Complainant’s mark is famous.
ii. Complainant has registered its mark with the USPTO.
1. The disputed domain name is not identical or confusingly similar to the MARLBORO mark.
a. Respondent’s domain contains the MARLBORO mark, but “bfmarlboro” is another word.
b. A Google search for the term “bfmarlboro” yields no results related to Complainant.
2. Respondent has legitimate interests in the disputed domain name.
a. Respondent registered and intends to use the <bfmarlboro.com> domain name for the development of a community site / forum for the participants of a game called BeFirstMarlboro organized by Complainant’s parent company in Romania. Respondent has rights in the disputed domain name as a participant in that game.
b. Even a five year old boy can tell Joomla is a site constructor and the <bfmarlboro.com> site is under construction.
3. Respondent registered and is using the disputed domain name in good faith.
a. Respondent has not made a commercial use of the corresponding website, and makes no reference to cigarettes.
C. Additional Submissions
1. Complainant’s Additional Submission
a. Respondent asserts BFMARLBORO is not confusingly similar to MARLBORO because BFMARLBORO is another word, and that just as the use of the word FACE would not violate the trademark owner’s rights in FACEBOOK, use of BFMARLBORO should not violate Complainant’s rights in MARLBORO. Complainant states this is not an apt analogy. FACE is a generic word that is in the public domain; MARLBORO is a famous registered trademark which respondent is not authorized to use, whether alone or in combination with other words or initials such as BF.
b. Respondent claims he has not made commercial use of the site associated with the disputed domain name. Because it does not point to information on MARLBORO or cigarettes, and that the site is under construction. Complainant asserts this diversion of Internet traffic away from Complainant’s website is, however, evidence of bad faith because it takes advantage of the likelihood that Internet users seeking Complainant's business would be confused as a possible source of the disputed domain name. Complainant asserts such diversion constitutes initial interest confusion which attracts Internet users to Respondent’s website based on Respondent’s use of the MARLBORO mark. This is further evidence of bad faith.
c. Respondent has provided no evidence to support his assertion that Philip Morris in Romania has organized the game known as “BeFirst Marlboro”. Such unsupported assertions do not establish rights or legitimate interests in the disputed domain name. Furthermore, Complainant has provided a statement from Philip Morris International Management S. A. confirming that the owner of the MARLBORO mark throughout the world outside the United States did not register or authorize the registration of the disputed domain name and that no consumer or business activity has been organized in Romania called “BeFirst Marlboro”, but rather merely an unbranded activity called “Be First”.
2. Respondent’s Additional Submission
a. MARLBORO is a famous trademark only when speaking about cigarettes, but not about a virtual community such as the one Respondent intended to make using the disputed domain name. MARLBORO and BFMARLBORO are not the same “not as words and neither as meaning”. BFMARLBORO is not about the MARLBORO brand, not about Phillip Morris USA and not about any commercial stuff that points to Philip Morris or their products, but about the community of the BeFirstMarlboro game.
b. Respondent is not making commercial or noncommercial use of the website associated with the disputed domain name. The domain does not point to any information regarding Philip Morris or MARLBORO or cigarettes.
c. If someone were intending to divert Internet traffic away from Complainant’s website, they would register a domain name starting with the word MARLBORO. A search of BFMARLBORO does not bring up BFMARLBORO, so there is no chance an Internet user will reach the disputed domain rather than the MARLBORO site.
d. Respondent reiterates he registered the disputed but domain name with the intention of using it to develop a community site / forum for participants in a game called BeFirstMarlboro organized by Philip Morris in Romania. He’s not paid for his work regarding the community development. Respondent wants to share his game experience with other people who enjoy the game. Respondent provides a link to what he suggests is more information about the game.
e. Respondent has never said Complainant authorized him to use the domain or to act on behalf of Complainant. He merely says the disputed domain name has nothing to do with Philip Morris or the MARLBORO brand or cigarettes. Respondent’s interest is in sharing the pleasure participants have in the game on the Internet.
1. Complainant has rights in the MARLBORO mark. The Disputed Domain Name is confusingly similar to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. Respondent has registered and is using the Disputed 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.
The information before the Panel shows Complainant has manufactured, marketed, and sold cigarettes in the United States since 1883. Complainant has registered the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered April 14, 1908). Complainant’s USPTO registration confers rights in the MARLBORO mark under Policy ¶ 4(a)(i), despite the fact Respondent appears to reside outside of the United States. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence established complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of respondent’s place of business).
Complainant argues Respondent’s <bfmarlboro.com> domain name is confusingly similar to Complainant’s MARLBORO mark. Respondent’s domain name simply adds random letters to Complainant’s mark, and the addition of “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. The Panel does not accept Respondent’s suggestion that somehow BFMARLBORO is merely another word. MARLBORO is not a generic word, but rather a famous trademark. BFMARLBORO is not a word at all, but merely the MARLBORO mark with two letters added to the front.
As a result, the Panel finds Respondent’s <bfmarlboro.com> domain name is confusingly similar to Complainant’s MARLBORO mark within the meaning of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states has prima facie demonstrated Respondent has no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO mark. Respondent is not a licensee of Complainant and has not obtained permission, either express or implied, from Complainant to use the MARLBORO mark, or any domain names incorporating the mark. Complainant contends Respondent was never known by any name or trade name that incorporates the word MARLBORO. The Panel finds on the evidence present in the record, there is nothing to suggest Respondent is commonly known by the <bfmarlboro.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the disputed domain name to resolve to a website that asks and allows Internet users to test and report problems for a computer program called Joomla (purportedly a content management system, which enables users to build websites and online applications). Previous panels have declined to recognize rights or legitimate interests where a respondent uses a disputed domain name to redirect Internet users to Respondent’s own unrelated website. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent's use of the <bfmarlboro.com> domain name, which is confusingly similar to Complainant’s MARLBORO mark, to divert Internet users to a website unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has met the initial burden to establish Respondent lacks rights or legitimate interests in the disputed domain name, and the burden shifts to Respondent. Respondent has provided no compelling evidence to establish any right or legitimate interest in the disputed domain name.
Complainant alleges Respondent registered the <bfmarlboro.com> domain name with full knowledge of Complainant’s rights in the MARLBORO mark. Complainant claims its mark had achieved widespread fame before Respondent registered the disputed domain name, adding that it had also registered its mark with the USPTO. Respondent, by his own admission, knew of Complainant’s MARLBORO mark before he registered the disputed domain name. Respondent says he registered the disputed domain name because of a BeFirst game sponsored by Phillip Morris in Romania. It’s difficult to see, then, how Respondent could argue he was not aware of the MARLBORO mark. On what is before us, the Panel concludes Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel is satisfied this actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Respondent, in Respondent’s additional submission refers to a website as evidence of the BeFirstMarlboro game which he alleges is the reason for his interest in the disputed domain name in order to set up a web site for players of the game. While the words BE FIRST appear on this web site, there is nothing on this web site to suggest the existence of a game containing the name MARLBORO. The declaration submitted by Complainant admits to an unbranded game called BeFirst. Respondent’s connecting of this unbranded activity with Complainant’s MARLBORO mark is also evidence of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bfmarlboro.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: April 7, 2104
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