PHILIP MORRIS USA INC. v. Leighton Stollard / SuperMega
Claim Number: FA2207002004692
Complainant is PHILIP MORRIS USA INC. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Leighton Stollard / SuperMega (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlbororeds.net>, 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2022; the Forum received payment on July 18, 2022.
On July 20, 2022, Wild West Domains, LLC confirmed by e-mail to the Forum that the <marlbororeds.net> 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 July 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2022, 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@marlbororeds.net. Also on July 25, 2022, 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 August 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the largest tobacco company in the United States.
Complainant holds a registration for the MARLBORO trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,379,044, registered January 16, 2018.
Respondent registered the domain name <marlbororeds.net> on or about January 7, 2022.
The domain name is confusingly similar to Complainant’s MARLBORO mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use its
MARLBORO mark in a domain name.
Respondent lacks both rights to and legitimate interests in the domain name.
Rather, Respondent inactively holds the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the MARLBORO mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By virtue of its registration of the MARLBORO trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights ….
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <marlbororeds.net> domain name is confusingly similar to Complainant’s MARLBORO mark. The domain name incorporates the mark in its entirety, with only the addition of the term “reds,” which refers to one of Complainant’s products, a specific cigarette formulation marketed in a red package, together with the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <marlbororeds.net> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <marlbororeds.net> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MARLBORO mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Leighton Stollard / SuperMega,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
Complainant also asserts, without objection from Respondent, that Respondent does not make any active use of the <marlbororeds.net> domain name and that such passive use does not constitute either a use in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. It is, of course, well-established that passive holding of a domain name is a form of “use” subject to the jurisdiction of the Policy. See, for example, SeekAmerica Networks Inc. v. Tariq Masood, D2000-0131 (WIPO April 13, 2000):
The concept of a domain name being used … is not limited to positive action: inaction is within the concept [see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (18 February, 2000)].
It is equally clear that passive holding of a domain name cannot be said to constitute either a use in connection with bona fide offering of goods or services under Policy¶4(c)(i) or a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018):
Respondent’s domain names currently display template websites lacking any substantive content. The Panel [therefore] finds that Respondent has does not have rights [to] or legitimate interests with respect of [sic] the domain name per Policy ¶¶4(c)(i) or (iii).
The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence of record that Respondent knew of Complainant and its rights in the MARLBORO trademark when it registered the <marlbororeds.net> domain name. This can be seen from both the fact that the domain name incorporates the mark in its entirety and that it also includes the term “reds,” a plain reference to one of Complainant’s products, a specific cigarette formulation marketed in a red package. Respondent’s knowledge of these facts at the time of its registration of the domain name demonstrates that it was registered by Respondent in bad faith, as that term is used in Policy¶4(a)(iii). See, for example, University of Rochester v. Park HyungJin, FA1587458 (Forum December 9, 2014):
[T]he Panel infers Respondent’s actual knowledge here, [and, therefore, its bad faith in registering a confusingly similar domain name,] based on Respondent’s complete use of the … mark in the … domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.
This leaves for resolution the question whether the <marlbororeds.net> domain name is also being used in bad faith within the contemplation of Policy ¶ 4(a)(iii). On this point, we are driven to the conclusion that, although the domain name is presently inactive, Respondent has provided no evidence of any contemplated good faith employment of the domain, and it is extremely difficult to conceive of any purpose to which it might be put that would not offend the principle of bad faith use. We therefore find that Respondent’s inactive holding of the domain name is a bad faith use of it under Policy ¶ 4(a)(iii). See, for example, State Farm Mutual Automobile Ins. Co. v. Dr. Keenan Cofield, FA 1799574 (Forum September 10, 2018) (finding bad faith use of a challenged domain name under Policy¶4(a)(iii) where the domain name initially resolved to a web page with a “website coming soon” message, but, at the point of decision, resolved to an error page with no content. To the same effect, see also Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), supra.
The Panel thus finds that complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <marlbororeds.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 22, 2022
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