WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan

Case No. D2011-1735

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“U.S.”), represented by Arnold & Porter, U.S.

The Respondent is PrivacyProtect.org / Nicola Pieropan of Nobby Beach, Australia and Stockport, United Kingdom of Great Britain and Northern Ireland (“U.K.”), respectively.

2. The Domain Name and Registrar

The Disputed Domain Name <marlboroblackmenthol.com> (the “Disputed Domain Name”) is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom, (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 13, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 17, 2011, The Registry at Info Avenue, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 21, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2011.

The Center appointed Jacques de Werra as the sole panelist in this matter on November 18, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant manufactures, markets, and sells cigarettes, including cigarettes under its MARLBORO trademark (the “Trademark”). Marlboro cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, the Complainant has used the Trademark and variations thereof in connection with its tobacco and smoking-related products.

The Complainant is the registered owner of the following trademarks, among others, on the principal register of the United States Patent and Trademark Office (“USPTO”):

The Disputed Domain Name was registered on February 17, 2010.

At the time the Complainant discovered the Disputed Domain Name, it resolved to a website which displayed and offered for sale numerous cigarette products bearing the Trademark. Once an Internet user clicked to select one of the items offered for sale on the website, it immediately resolved to another website located at “www.indonesiacigarettes.com” that offered for sale what is alleged to be illegally imported cigarettes from different brands from various companies, including some bearing the Trademark.

5. Parties’ Contentions

A. Complainant

The Complainant claims as follows:

- The Disputed Domain Name is confusingly similar to the Trademark. Due to the fame of the Trademark, the Respondent surely knew that the use of the term “Marlboro Black Menthol” as the Disputed Domain Name would cause confusion among Internet users as to whether the Complainant was affiliated with the Respondent, or sponsored or endorsed the Respondent’s website;

- The Respondent has no legitimate interests or rights in the Disputed Domain Name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the Trademark. The Respondent was never known by any name or trade name that incorporates the word “Marlboro.” On information and belief, the Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof, and indeed could never do so given the Complainant’s pre-existing and exclusive rights to this mark throughout the U.S. The Respondent has not received any license, authorization, or consent -- express or implied -- to use the Trademark in a domain name or in any other manner, either at the time when the Respondent registered and began using the Disputed Domain Name, or at any other time since. The Respondent’s misappropriation of the Trademark by its inclusion in the Disputed Domain Name is no accident. Clearly, the Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the Trademark with the Complainant’s tobacco products.

- The Respondent has registered the Disputed Domain Name in bad faith by doing so with full knowledge of the Complainant’s rights in the Trademark. In addition, the deliberate attempt of the Respondent to conceal its identity, coupled with the facts above, further implicates bad faith on the part of the Respondent. The use that the Respondent, upon information and belief, has made of the Disputed Domain Name to derive revenue from the unauthorized sale of cigarettes constitutes bad faith. The Respondent’s suspected use of the Disputed Domain Name in this manner supports the inference that the Respondent has used the Disputed Domain Name with the intent to deceive Internet users and profit from the goodwill associated with the Trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trademark acquired through use and registration which predate by many decades the dates of registration of the Disputed Domain Name. The Complainant has not filed any direct evidence of its rights in the Trademark outside of the U.S., but the Panel has no hesitation in finding that the Trademark is a well-known trademark worldwide as held by many other panels. See, e.g., Philip Morris USA Inc. v. Wan Wang, WIPO Case No. D2011-0584.

In this case, the Disputed Domain Name integrates the Trademark in full to which it adds descriptive terms (“black menthol”). The Panel notes that the addition of these non-distinctive words does not serve to distinguish the Disputed Domain Name from the Trademark in any way.

The Panel finds that the Disputed Domain Name is confusingly similar to the Trademark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the Trademark. The Complainant has prior rights in the Trademark which precede the Respondent’s registration of the Disputed Domain Name by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The evidence suggests that the Disputed Domain Name is used by the Respondent to market cigarette products manufactured both by the Complainant and by its competitors. The use of the Trademark in this manner without the authorisation of the Complainant does not give rise to any rights or legitimate interests in the Disputed Domain Name on the part of the Respondent.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the Disputed Domain Name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

The Panel first notes that that the Respondent has registered the Disputed Domain Name in bad faith (as discussed below) and likely did so with knowledge of the Complainant’s rights in the Trademark. See Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was “inconceivable” that the respondent, who sold tobacco products, “was not aware of the MARLBORO trademarks”).

Whilst the use of a website to market and sell genuine products manufactured by a third party is not necessarily of itself conduct evincing bad faith on the part of the Respondent, the Panel notes that the website associated with the Disputed Domain Name offers for sale (through an associated website to which it resolves) products of not just the Complainant but also of the Complainant’s competitors. In registering and using the Disputed Domain Name the Respondent is clearly using the well-known Trademark of the Complainant in order to attract Internet users to the Disputed Domain Name. The Panel finds use of the Trademark in this manner in order to promote the sale of cigarette products of the Complainant’s competitors is clear evidence of bad faith.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <marlboroblackmenthol.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Dated: December 2, 2011