Philip Morris USA Inc. v. Asgar Khan
Claim Number: FA1710001754101
Complainant is Philip Morris USA Inc. (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Asgar Khan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2017; the Forum received payment on October 17, 2017.
On October 17, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.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 October 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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-freecarton.us, postmaster@marlboro-packss.us, postmaster@marlboro-gratis.us, postmaster@marlboro-5cart0n.us, postmaster@marlboro-5cart0ns.us, postmaster@marlboro-5carton.us, postmaster@marlboro-5freecarton.us, postmaster@marlboro-5freecartons.us, postmaster@marlb0r0-5cartons.us, postmaster@marlbor0-5cartons.us. Also on October 17, 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 10, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain names are confusingly similar to Complainant’s mark as each includes the MARLBORO mark and adds a hyphen and one or more of the following generic descriptive terms or numbers after Complainant’s mark: “free,” “carton,” “gratis,” “packss,” “cartons” and “5,” and the country code top-level-domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent utilized the disputed domain names for a phishing scheme in which unsuspecting internet users would provide personal information in exchange for products. Additionally, Respondent used the <marlb0r0-5cartons.us> and <marlbor0-5cartons.us> domain names to host links to third-party websites.
Respondent registered and uses the <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain names in bad faith. Respondent engaged in a pattern of bad faith registration and use. Respondent intentionally attempts to attract, for commercial gain, Internet users otherwise seeking Complainant through the appropriation of Complainant’s marks. Respondent utilizes typosquatting to capitalize on potential typographical errors. Respondent had actual knowledge of Complainant’s rights in the MARLBORO mark prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MARLBORO mark.
Respondent registered the at-issue domain name after Complainant acquired rights in MARLBORO.
Respondent uses the <marlb0r0-5cartons.us> and <marlbor0-5cartons.us> to host links to third-party websites.
Respondent uses the at-issue domain names to facilitate a phishing scheme in which duped internet users provide personal information in exchange for products.
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 or 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its MARLBORO mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain names contains Complainant’s entire MARLBORO trademark suffixed with a hyphen and a variety of generic terms, some with the numerals “5” and/or “0” inserted. In instances the numeral “0” is substituted for one or two “O”s in the MARLBORO. Respondent adds a top-level domain name, here the country code “.us,” to conclude each domain name. Nevertheless, the differences between each domain name and Complainant’s MARLBORO mark are insufficient to materially distinguish one from the other under the Policy. In fact, the terms “carton,” “pack,” and perhaps some other terms, suggest Complainant cigarette related business thus adding to the confusion caused by the inclusion of Complainant’s trademark in each domain name. Therefore, the Panel finds that Respondent’s marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us>domain names are each confusingly similar to Complainant’s MARLBORO trademark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain name lists “Asgar Kahn” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by any at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent registered and used the domain names to host survey websites to facilitate a phishing scheme where unsuspecting internet users are lulled into providing Respondent with certain personal information ostensibly in exchange for products. Use of a domain name in furtherance of a phishing scheme is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy. See Nordstrom, Inc. v. Above.com Domain Privacy, FA 1654490 (Forum Feb. 1, 2016) (finding respondent failed under Policy ¶¶ 4(c)(i) and (iii) as it phished for internet users’ personal information via a fake survey). Also, Respondent used the <marlb0r0-5cartons.us> and <marlbor0-5cartons.us> domain names to host links to third-party websites. Using a domain name to host links to third-party websites is likewise not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain name were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that as to each domain name Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
First, a respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration. Here, each at-issue domain name contains an unauthorized inclusion of a version of Complainant’s MARLBORO trademark. Complainant also shows that Respondent has registered domain names that infringe on third parties’ marks such as <pizzahut-anniversary.us> and <newport-freecarton.us>. Respondent’s pattern of apparent cybersquatting indicates bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Next, Respondent uses the trademark similar domain names to create confusion as to the sponsorship of their referenced websites. Indeed, Complainant’s MARLBORO mark is prominently displayed on websites referenced by one or more of the at-issue domain names. In light of the foregoing, Respondent’s bad faith registration and use of each of the relevant domain names is demonstrated pursuant to Policy ¶ 4(b)(iv). 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.”).
Finally, Respondent registered marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> knowing that Complainant had rights in the MARLBORO trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, use of such trademark on Respondent’s relevant websites, and from Respondent’s inclusion of terms within at-least some of the at-issue domain names which suggest Complainant’s business. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro-freecarton.us>, <marlboro-packss.us>, <marlboro-gratis.us>, <marlboro-5cart0n.us>, <marlboro-5cart0ns.us>, <marlboro-5carton.us>, <marlboro-5freecarton.us>, <marlboro-5freecartons.us>, <marlb0r0-5cartons.us>, and <marlbor0-5cartons.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 12, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page