Philip Morris USA Inc. v. Indrawan Setiadi
Claim Number: FA1711001757744
Complainant is Philip Morris USA Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Indrawan Setiadi (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboromerah.us> and <marlboroblackmenthol.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2017; the Forum received payment on November 8, 2017.
On November 9, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlboromerah.us> and <marlboroblackmenthol.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 November 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@marlboromerah.us and postmaster@marlboroblackmenthol.us. Also on November 9, 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 December 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 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, Philip Morris Inc, uses its MARLBORO mark to promote its goods and services and registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s <marlboromerah.us> and <marlboroblackmenthol.us> domain names are confusingly similar because each appends a descriptive term and the country code top-level domain (“ccTLD”) “.us” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names. Respondent is not using the infringing domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to redirect Internet users to websites that resolve to pages that are under maintenance and lack content.
Respondent registered and is using the disputed domain names in bad faith. Respondent has established a pattern of bad faith, as it currently holds the registration for numerous confusingly similar domain names for famous marks. Further, Respondent attempts to create confusion as to the source of the disputed domain names, confusing users into believing an affiliation exists between Complainant and Respondent. Additionally, Respondent failed to make an active use of the domain names’ resolving websites. Finally, Respondent registered the domain names with actual and constructive knowledge of Complainant’s rights in the MARLBORO mark due to the longstanding fame of Complainant’s MARLBORO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris Inc, uses its MARLBORO mark to promote its goods and services and registered the mark with the USPTO (Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s <marlboromerah.us> and <marlboroblackmenthol.us> domain names are confusingly similar to Complainant’s MARLBORO mark.
Respondent, Indrawan Setiadi, registered the <marlboromerah.us> and <marlboroblackmenthol.us> domain names on September 16, 2017.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent uses the domain names to redirect Internet users to websites that resolve to pages that are under maintenance and lack content.
Respondent registered and is using the disputed domain names 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 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.”).
Complainant has rights in the MARLBORO mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <marlboromerah.us> and <marlboroblackmenthol.us> are confusingly similar because each appends a descriptive term, either “merah” or “black menthol,” and the ccTLD “.us” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <marlboromerah.us> and <marlboroblackmenthol.us> domain names. Complainant has not licensed or authorized Respondent to use its MARLBORO mark. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <marlboromerah.us> and <marlboroblackmenthol.us> lists “Domain Admin” as the registrant. Accordingly, Respondent is not commonly known by the<marlboromerah.us> or <marlboroblackmenthol.us> domain names.
Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to redirect Internet users to websites that resolve to pages that are under maintenance and lack content. A respondent’s failure to make demonstrable preparations to use a domain name can show that a respondent is not using the domain name in connection with any bona fide offerings of goods or services or legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Respondent’s resolving websites contain the message “We’ll be back soon! Sorry for the inconvenience but we’re performing some maintenance at the moment.” Therefore, Respondent does not make an active use of the domain names, and thus does not use the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent’s <marlboromerah.us> and <marlboroblackmenthol.us> domain names resolve to webpages indicating the site is under construction. Failure to make an active use of a domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent registered the <marlboromerah.us> and <marlboroblackmenthol.us> domain names in bad faith as Respondent has a propensity for registering domain names confusingly similar to famous marks. A complainant may use evidence of cybersquatting to show that a respondent in a current proceeding registered a domain name bad faith under Policy ¶ 4(b)(ii). See 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)). Complainant provides a list of other domain names held by Respondent, which include variations of the DJARUM BLACK and DUNHILL MILD marks, among others. Accordingly, the Panel finds that Respondent registered the disputed domain names in bad faith based on Respondent’s prior history of registering domain names confusingly similar to famous marks.
Finally, in light of the fame and notoriety of Complainant’s MARLBORO mark, it is inconceivable that Respondent could have registered the <marlboromerah.us> and <marlboroblackmenthol.us> domain names without actual knowledge of Complainant’s rights in the mark. Therefore, Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent is presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. 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).”).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboromerah.us> and <marlboroblackmenthol.us> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 11, 2017
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