DECISION
Philip Morris USA Inc. v. Mas Sukses / Sukses
Claim Number: FA2404002093696
PARTIES
Complainant is Philip Morris USA Inc. ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is Mas Sukses / Sukses ("Respondent"), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lotremarlboro.com>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 17, 2024; Forum received payment on April 17, 2024.
On April 17, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <lotremarlboro.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@lotremarlboro.com. Also on April 23, 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 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Philip Morris USA Inc., is the largest tobacco company in the United States. Complainant has been making premium tobacco products for more than 150 years and has been the leading cigarette manufacturer in the United States for more than 40 years. Through widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with Complainant and its products. Complainant owns rights in the MARLBORO mark, inter alia, with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 68,502, registered April 14, 1908). The disputed domain name is confusingly similar to Complainant's MARLBORO mark because it incorporates the mark in its entirety and merely adds a generic term and the ".com" gTLD.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its MARLBORO mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use. Instead, Respondent is using the disputed domain name to resolve to a website, which is offering lottery and online gambling and casino services.
B. Respondent
Respondent did not submit a Response in this proceeding.
FINDINGS
1. The disputed domain name was registered on October 27, 2023.
2. Complainant has established rights in the MARLBORO mark, inter alia, with the USPTO (e.g. Reg. No. 68,502, registered April 14, 1908).
3. The disputed domain name resolves to a website, which offers lottery and online gambling and casino services.
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
Complainant asserts that it has established rights in the MARLBORO mark via its registration with the USPTO (e.g. Reg. No. 68,502, registered April 14, 1908). Registration of a mark with the USPTO sufficiently establishes rights in that mark. Complainant has provided evidence of registration of the MARLBORO mark with the USPTO. Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <lotremarlboro.com> is confusingly similar to Complainant's MARLBORO mark because it incorporates the mark in its entirety and merely adds the generic word "LOTRE" (Indonesian for 'lottery', in texting meaning lottery) and the gTLD ".com."
The Panel finds that the addition of the nondistinctive term "LOTRE" (Indonesian for 'lottery', in texting meaning lottery) and the gTLD ".com" fails to obviate the confusing similarity. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) ("Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant's mark under Policy ¶ 4(a)(i)."); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). The Panel thus finds that the disputed domain name is confusingly similar to Complainant's MARLBORO mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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.").
Complainant claims Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not licensed or authorized to use Complainant's MARLBORO mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as "Mas Sukses / Sukses." There is nothing in the records to suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website, which is offering lottery and online gambling and casino services. Using a confusingly similar domain to display unrelated content, e.g., a lottery or gambling service can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) ("Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent's unrelated use of the domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii)."); see also Radio Flyer, Inc. v. An Hai Tang, FA 1874155 (Forum Jan. 4, 2020) (finding respondent did not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use where respondent's website promoted a lottery or gambling service).
Complainant provides a screenshot of the disputed domain name's resolving website, which is offering lottery and online gambling and casino services. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant contends that Respondent has registered and is using the domain name in bad faith because the disputed domain name resolves to a website that offers gambling services. As previously noted, Respondent uses the disputed domain name to direct Internet users to a website offering a lottery or gambling services. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by trading off of the goodwill associated with Complainant's MARLBORO mark for commercial gain, and thus Respondent registered and uses the disputed domain name in bad faith. See Todd McFarlane and TMP International LLC v. tim wang, FA 2073747 (January 1, 2024) ("Respondent disrupted Complainant's business by diverting users to its purported scam commercial website to sell products unrelated to the Complainant's business. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by passing itself off as Complainant for commercial gain, and thus Respondent registered and used the disputed domain name in bad faith.").
Next, Complainant argues Respondent registered the disputed domain name with constructive or actual notice of Complainant's rights in the MARLBORO mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given the world-wide fame of Complainant and its mark, and the fact that the disputed domain name incorporates Complainant's mark verbatim. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the MARLBORO mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
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 <lotremarlboro.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 16, 2024
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