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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Administrator, Eastern Valley Limited / Domain Administrator, China Capital Investment Limited

Case No. D2017-1978

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Administrator, Eastern Valley Limited / Domain Administrator, China Capital Investment Limited of Hong Kong, China.

2. The Domain Names and Registrars

The disputed domain names <freecouponmarlboro.com> and <marlboroprime.com> are registered with Interweb Advertising D.B.A. Profile Builder; the disputed domain name <marlboro-house.com> is registered with Domaincircle LLC; the disputed domain names <marlborobkack.com>, <marlborogift.com>, <marlboropacks.com> and <marlboroprizes.com> are registered with GoDaddy.com, LLC.

Interweb Advertising D.B.A. Profile Builder, Domaincircle LLC and GoDaddy.com, LLC are hereinafter individually or collectively named as the "Registrar(s)".

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2017. On October 11, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 11, 12 and 19, 2017, the Registrars respectively transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 15, 2017.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 21, 2017. 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, Philip Morris USA Inc., has proven to be the owner of the renowned MARLBORO mark.

The Complainant is inter alia the owner of:

United States Trademark No. 68,502, MARLBORO, registered on April 14, 1908, for cigarettes (first use in commerce, 0-0-1883);

United States Trademark No. 3,365,560, MARLBORO registered on January 8, 2008 for tobacco products, namely, snus in class 34 (first use in commerce: August 6, 2007);

United States Trademark No. 3,419,647, MARLBORO registered on April 29, 2008, for Tobacco products, namely, smokeless tobacco, in class 34 (first use in commerce: August 6, 2007);

The Complainant is also the owner of numerous domain names consisting of the MARLBORO trademark, including <marlboro.com> and <marlboro.net>.

The disputed domain names were registered by the Respondents between December 12, 2016 and September 14, 2017.

The Complainant's trademark registrations long predate the registration of the disputed domain names.

The disputed domain names resolve to parking pages containing third party-sponsored links, some of which directly compete with the Complainant's area of business.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the MARLBORO trademark, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

Regarding the Respondents' identity, the Complainant asserts that according to the WhoIs database, the Respondents in this administrative proceeding are Eastern Valley Limited and China Capital Investment Limited, both based in Hong Kong.

The Complainant furthermore submits that Eastern Valley Limited and China Capital Investment Limited are one and the same entity, as is shown by the following:

a) Both companies use "Domain Administrator" as the Registrant Name, both use an address based in Hong Kong, and both give the same phone number for all the disputed domain names with the exception of one, <freecouponmarlboro.com>;

b) all the disputed domain names share the same email address;

c) all the disputed domain names resolve to pay-per-click websites, share the same DNS, and are posted for sale at Sedo for similar dollar amounts.

B. Respondent

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

6. Discussion and Findings

6.1. Consolidation of Multiple Respondents

According to the registration information verified by the Registrars, the disputed domain names are registered by Eastern Valley Limited and China Capital Investment Limited. The Complainant asserts that Eastern Valley Limited and China Capital Investment Limited are one and the same entity.

In accordance with the Rules, paragraph 3(c), the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Although the names of the disputed domain name registrants are different, the Panel on the evidence available (including, for example, that all registrants share the same email address, and that all (except one) have listed the same telephone number in their registration details for the disputed domain names) finds that all the disputed domain names identified in the Complaint are registered by the same domain name holder or are at least under common control. The Panel, therefore, accepts the Complainant's request to address all the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the "Respondent" hereinafter.

6.2. Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the MARLBORO trademark.

The disputed domain names <freecouponmarlboro.com>, <marlboroprime.com> ,<marlboro-house.com>, <marlborobkack.com>, <marlborogift.com>, <marlboropacks.com> and <marlboroprizes.com> identically reproduce the Complainant's MARLBORO trademark with the addition of generic terms such as "prime", "packs", "house", "free coupon", "gift", "prizes" and "bkack" ("bkack" being most probably a misspelling of the word "black").

It is well established that where the Complainant's trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity.

In the present case, each one of all seven disputed domain names incorporates the renowned MARLBORO trademark in its entirety with the addition of generic or descriptive terms.

This is not sufficient to overcome a finding of confusing similarity pursuant to the Policy.

Therefore, the Panel finds all the disputed domain names to be confusingly similar to the MARLBORO trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C. below. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain names.

Finally, this Panel believes the MARLBORO mark, due to its renown, is not one that traders could legitimately adopt for commercial use other than for the purpose of creating an impression of an association with the Complainant.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the MARLBORO mark when it registered the disputed domain names.

The Respondent's knowledge of the MARLBORO mark is particularly obvious, given the worldwide renown it has acquired and the Respondent's choice to combine the MARLBORO trademark with generic terms such as "packs" (cigarettes are sold in packs) and "free coupon" (the Complainant provides coupons).

In addition, the Respondent is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant's areas of business. Indeed, some of the websites to which the disputed domain names resolve features multiple third party links for cigarettes, tobacco and products made by the Complainant's competitors. Further, almost all of the Respondent's websites also feature links that directly refer to the Complainant and its business.

Finally, the fact that the Respondent chose to register seven domain names containing the renowned MARLBORO trademark coupled with generic terms, some of them referring to the products and/or to the services related to this trademark, is further inference that the Respondent knew of the Complainant's trademarks and products when registering the disputed domain names.

Therefore, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its areas of business at the time of registration of the disputed domain names.

Moreover, the Panel notes the following:

The disputed domain names are being offered for sale for amounts that far exceed the Respondent's out-of-pocket expenses in registering the domains, and this is further evidence of the Respondent's lack of rights and legitimate interests as well as bad faith registration and use.

The Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering domains that incorporate the Complainant's MARLBORO trademark in its entirety while merely adding related generic terms to said trademark. This confuses Internet users looking for the Complainant's products and services, and misleads them as to the source of the disputed domain names and websites.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 names <freecouponmarlboro.com>, <marlborobkack.com>, <marlborogift.com>, <marlboro-house.com>, <marlboropacks.com>, <marlboroprime.com> and <marlboroprizes.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: November 28, 2017

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