DECISION

 

Philip Morris USA Inc. v. Milen Radumilo

Claim Number: FA2310002065674

 

PARTIES

Complainant is Philip Morris USA Inc. ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is Milen Radumilo ("Respondent"), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <marlboro-freecartons.us>, registered with CommuniGal Communication Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 10, 2023; Forum received payment on October 10, 2023.

 

On October 13, 2023, CommuniGal Communication Ltd. confirmed by email to Forum that the <marlboro-freecartons.us> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@marlboro-freecartons.us. Also on October 18, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the largest tobacco company in the United States. Complainant's top-selling tobacco product is the MARLBORO brand of cigarettes. Complainant owns longstanding United States trademark registrations for MARLBORO and asserts that the mark is famous worldwide, noting prior decisions under the Uniform Domain Name Dispute Resolution Policy ("UDRP") that have so found.

 

Respondent registered the disputed domain name <marlboro-freecartons.us> in July 2023. The domain name is being used for a website composed of pay-per-click links, including links to direct competitors of Complainant. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and is not licensed or otherwise authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <marlboro-freecartons.us> is confusingly similar to its MARLBORO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 or is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 UDRP and the usTLD Policy, the Panel will draw upon UDRP principles 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated allegations. See Philip Morris USA Inc. v. Asgar Khan, FA 1754101 (Forum Nov. 12, 2017); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.

 

Identical and/or Confusingly Similar

The disputed domain name <marlboro-freecartons.us> incorporates Complainant's registered MARLBORO trademark, adding a hyphen, the generic terms "free" and "cartons," and the ".us" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Philip Morris USA Inc. v. Asgar Khan, supra (finding <marlboro-freecarton.us> and <marlboro-5freecartons.us> confusingly similar to MARLBORO). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use is for a website composed of pay-per-click links, some of which link to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Amazon Technologies, Inc. v. Milen Radumilo, FA 2016177 (Forum Nov. 22, 2022) (finding lack of rights or legitimate interests in similar circumstances); MedicAlert Foundation United States, Inc. v. Milen Radumilo, FA 2002114 (Forum Aug. 1, 2022) (same); Huntsman International, LLC v. Milen Radumilo, FA 1910409 (Forum Oct. 4, 2020) (same); Philip Morris USA Inc. v. Asgar Khan, supra (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration or Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), 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 incorporating Complainant's famous registered mark without authorization, and is using it for the sole apparent purpose of displaying pay-per-click links, including links to competitors of Complainant. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., MedicAlert Foundation United States, Inc. v. Milen Radumilo, supra (finding bad faith registration or use in similar circumstances); Huntsman International, LLC v. Milen Radumilo, FA 1910409 (Forum Oct. 4, 2020) (same); Philip Morris USA Inc. v. Asgar Khan, supra (same). The Panel finds that the disputed domain name was registered or is being used in bad faith.

 

DECISION

Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marlboro-freecartons.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: November 8, 2023