WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W

Case No. D2012-0660

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 of Nobby Beach, Australia and Paundrayana W of Nusa Tenggara Barat, India.

2. The Domain Name and Registrar

The disputed domain name <marlboromenthol.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2012, 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 March 30, 2012 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 April 2, 2012.

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 April 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2012.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 1, 2012. 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 PM USA has a long tradition in the field of tobacco and is currently one of the world leaders in this market.

MARLBORO cigarettes have been made and sold by the Complainant (and its predecessor entities) since 1883, with the modern history of the brand beginning in 1955.

The Complainant operates on the Internet under the domain names <philipmorrisusa.com> and <marlboro.com>.

The disputed domain name <marlboromenthol.com> was registered on March 1, 2011.

The Panel tried to access the website linked to the disputed domain name on May 14, 2012, but there was an error in retrieving the requested page.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products. The Complainant owns several trademarks incorporating the word “marlboro” for many decades. The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO trademarks throughout the U.S., and the Complainant has thus developed substantial goodwill in the MARLBORO trademarks. Through such widespread, extensive efforts, the MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products.

(ii) 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 MARLBORO trademarks. 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.

(iii) The disputed domain name reproduces the name of the Complainant’s products. The choice of the disputed domain name by the Respondent cannot be fortuitous. By using the disputed domain name, the Respondent intentionally attempted to lure adult smokers to its website. Using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith, and it is demonstrated by the mere registration of a domain name that incorporates a complainant’s well-known trademark, despite lack of an active website associated with the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that MARLBORO is a trademark directly connected with the Complainant’s products.

Annex C to the Complaint demonstrates registration of the MARLBORO trademark in the U.S. since at least 1908.

The trademark MARLBORO is wholly encompassed within the disputed domain name, which also includes the generic term “menthol”.

In a previous UDRP decision, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question”

(F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).

Furthermore, “Marlboro Menthol” is one of the main cigarette flavors sold by the Complainant. Therefore, the Panel concludes that in this case, the addition of the term “menthol” even heightens the similarity between the disputed domain name and the Complainant’s trademark.

As a result, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

When the disputed domain name was registered the Complainant’s trademark MARLBORO and its products (including a variation with menthol flavor) were already well known worldwide. Numerous previous UDRP panels have already recognized the worldwide renown and fame of the Complainant’s MARLBORO trademarks (see, e.g., Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614. This circumstance is clear enough to refute the possibility of coincidence in the Respondent’s registration of the disputed domain name.

Therefore, in registering and holding the disputed domain name, the Respondent creates a likelihood of confusion with the Complainant’s famous trademark and deprives the Complainant from offering its products to prospective clients who are clearly looking for it via the disputed domain name.

The present lack of active use of the disputed domain name does not help the Respondent. Previous UDRP decisions have shown that the mere passive holding of a domain name may be characterized as bad faith in some cases, mainly considering that the disputed domain name reproduces a well-known trademark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.

Finally, given the circumstances of this case, the use of privacy services also amplifies the characterization of bad faith registration and use.

Accordingly, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.

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 <marlboromenthol.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Dated: May 15, 2012