DECISION

 

Philip Morris USA Inc. v. Mal Boro / LTDA

Claim Number: FA2404002093688

 

PARTIES

Complainant is Philip Morris USA Inc. ("Complainant"), represented by Gina Carrillo of Corsearch, Inc., Texas, USA. Respondent is Mal Boro / LTDA ("Respondent"), Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marlborooficial.com>, registered with HOSTINGER operations, UAB.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 17, 2024; Forum received payment on April 17, 2024.

 

On April 19, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <marlborooficial.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 April 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2024 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@marlborooficial.com. Also on April 24, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On May 15, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco  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 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, 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 contends as follows:

 

Complainant is the largest tobacco company in the United States and has been making premium tobacco products for more than 150 years. Complainant has been the leading cigarette manufacturer in the United States for more than 40 years.

 

Complainant owns U.S. federal trademark registrations for its MARLBORO mark.

 

Respondent's <marlborooficial.com> domain name is nearly identical and confusingly similar to Complainant's MARLBORO mark. The domain name incorporates Complainant's trademark in its entirety merely adding the word "oficial" (a misspelling of "official" or Portuguese for "official") and the top level portion of the domain name is irrelevant to confusingly similar analysis.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent is not commonly known by the domain name and there is no evidence of Respondent having trademark rights in the domain name or Complainant's mark. Respondent is not affiliated with Complainant and Complainant has not granted Respondent any authorization to use its trademarks. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial use fair use of the at-issue domain name. Instead, Respondent's <marlborooficial.com> domain name has addressed an active website using the Complainant's trademark giving the false impression that it is connected with Complainant and now holds the domain name inactively.

 

Respondent registered and used the at-issue domain name in bad faith. The domain name previously resolved to a website that used Complainant's MARLBORO mark but is now inactive which shows bad faith. Respondent created a likelihood of confusion as to the Complainant's association with the at-issue domain name which indicates bad faith pursuant to Policy ¶ 4(a)(iv). Respondent had actual knowledge of Complainant's right in MARLBORO when it registered <marlborooficial.com>. Respondent's use of a privacy service further shows Respondent's bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the MARLBORO trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the MARLBORO trademark.

 

Respondent used the at-issue domain name to address a website that purportedly offers Complainant's goods for sale. Respondent now holds the at-issue domain name passively. 

 

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 and is being used in bad faith.

 

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 arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The at-issue domain is confusingly similar to a trademark in which Complainant has rights.

 

Any of Complainant's USPTO registrations for MARLBORO is sufficient to establish Complainant's rights in such mark for the purposes of Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The at-issue domain name contains Complainant's entire MARLBORO trademark, followed by the term "official," with all followed by the ".com" top-level domain name. The differences between Respondent's <marlborooficial.com> domain name and Complainant's trademark are insufficient to distinguish the domain name from the trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <marlborooficial.com> domain name is confusingly similar to Complainant's MARLBORO mark. Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Rights or Legitimate Interests

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 the at-issue domain name. 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 the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <marlborooficial.com> shows that "Mal Boro" is its registrant and there is no evidence in the record indicating that Respondent is in anyway known by the <marlborooficial.com> domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent used the at-issue domain name to address a website that might pass for being sponsored by Complainant. There, Respondent appears to have offered Complainant's MARLBORO products for sale. Currently, the domain name is held passively and when browsed to returns the error message. Neither Respondent's prior use of the domain name to pose as Complainant and offer Complainant's goods, nor Respondent's current passive holding of the domain name is indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant"); see also, CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).")

 

Given the forgoing, Complainant demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

Respondent has used the at-issue domain name to address a website appearing to be endorsed by Complainant as it is bannered with a stylized version Complainant's MARLBORO mark and contains what looks like an online store offering Complainant's MARLBORO products for sale. Using the confusingly similar <marlborooficial.com> domain name in such manner is disruptive to Complainant's business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent. Such use of the domain name thus demonstrates Respondent's bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Respondent's <marlborooficial.com> domain name is now inactive. Browsing to the domain name returns an error message stating that "[t]his site can't be reached." Respondent's passive holding of the confusingly similar <marlborooficial.com> domain name indicates Respondent's bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) ("Respondent's domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the MARLBORO mark when it registered <marlborooficial.com> as a domain name. Respondent's prior knowledge is apparent given MARLBORO's fame and widespread long term use. Respondent's registration of <marlborooficial.com> with knowledge of Complainant's trademark rights in MARLBORO further shows Respondent's bad faith registration and use 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <marlborooficial.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated: May 16, 2024