WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Philip Morris Incorporated v. Eddy Fitch

Case No: D2002-0869

The Complainant is Philip Morris Incorporated, a corporation organized in the State of Virginia, United States of America ("USA"), with place of business in New York, New York, United States of America, ("USA").

The Respondent is Eddie Fitch, with address in Nashville, Tennessee, USA.

The disputed domain name is <cheap-marlboro-cigarrettes.net>.

The registrar of the disputed domain name is Go Daddy Software, with business address in Scottsdale, Arizona, USA.

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint via e-mail received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 17, 2002, and via courier mail received by the Center on September 18, 2002. Complainant paid the requisite filing fees. On September 18, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, Go Daddy Software, with the Registrar’s response received by the Center on September 18, 2002.

(b) On September 19, 2002, the Center transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail and courier mail. The last day for submitting a Response was set forth as October 9, 2002. The courier mail notification appears to have been successfully delivered.

(c) On October 10, 2002, the Center transmitted via e-mail notification to Respondent of its default in responding to the Complaint.

(e) On October 15, 2002, the Center invited the undersigned to serve as Panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 16, 2002, the undersigned transmitted via telefax the executed Statement and Declaration to the Center.

(g) On October 17, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole Panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by October 31, 2002. The Panel received a hard copy of the file in this matter by courier from the Center.

(h) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, the Center notified the parties that the projected date for a decision would be extended until November 8, 2002.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Complainant is the holder of various trademark registrations for the term "MARLBORO" on the Principal Register at the United States Patent and Trademark Office (USPTO), including Reg. No. 68502, dated April 14, 1908, in International Class 34, covering "cigarettes". Complainant also holds registrations on the Principal Register for various "MARLBORO" formative marks, such as "MARLBORO LIGHTS". (Complaint, para. 12 & Annexes 5-6)

Complainant has for a long time used the "MARLBORO" mark in connection with the promotion and sale of cigarettes in the United States and other countries. Complainant asserts that its mark is registered in countries outside the United States. Complainant’s mark is well-known in connection with the promotion and sale of cigarettes in the United States.

According to the Registrar’s (Go Daddy Software’s) verification response to the Center, dated September 18, 2002, "Eddy Fitch" is the listed registrant of the disputed domain name <cheap-marlboro-cigarettes.net>. According to a Go Daddy WHOIS database report submitted by Complainant, the record of registration for the disputed domain name was created on June 14, 2002, and was last updated on that same date (Complaint, Annex 1).

As late as August 13, 2002, Respondent used the disputed domain name to direct Internet users to a website located at URL <cheap-marlboro-cigarettes.net>. On the home page at that site, Respondent used the banner name "Cheap Marlboro Cigarettes", followed by "Brand Name Cigarettes at Discount Prices." Respondent offered to sell and deliver cigarettes "tax free" at an up to fifty percent discount. At its web location, Respondent also offered to sell competing brand name cigarette products, including "Camel" and "Winston and Salem". There was no disclaimer of affiliation of association with Complainant on this website. (Id., Annex 12)

By letter and e-mail of August 15, 2002, Complainant sent a cease and desist and transfer demand to Respondent. There was no reply from Respondent. In response to a copy of this demand letter, the web hosting service for Respondent removed its website. (Id., paras. 19-20 & Annex 7)

The Registration Agreement in effect between Respondent and Go Daddy Software subjects Respondent to Go Daddy Software’s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

Complainant asserts that it holds rights in the trademark "MARLBORO" as evidenced by registration at the USPTO and through its long use in commerce.

Complainant alleges that the disputed domain name <cheap-marlboro-cigarettes.net> is confusingly similar to its mark. Complainant argues that addition of the terms "cheap" and "cigarettes" before and after its mark do not avoid confusion, and that use of the term "cigarettes" exacerbates confusion since such term would be expected to be used in connection with Complainant’s mark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. It argues that Respondent is not authorized to use its mark, has not been commonly known by the mark, and deliberately chose the mark to take advantage of consumer confusion in drawing purchasers to its website.

Complainant asserts that Respondent registered and used the disputed domain name in bad faith by deliberately attempting to attract for commercial gain Internet users to its website by creating confusion as to Complainant’s sponsorship of or affiliation with its website.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of various trademark registrations for the term "MARLBORO" on the Principal Register of the USPTO. Pursuant to Article 15.2 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights and, inter alia, Article 6 quinquies of the Paris Convention on the Protection of Industrial Property, a state may refuse to register a mark that is contrary to morality or public order. The USPTO has allowed the continued registration of the "MARLBORO" mark. The Panel accepts that Complainant presently has rights in the trademark "MARLBORO" under U.S. trademark law.

The disputed domain name <cheap-marlboro-cigarettes.net> adds common descriptive terms before and after Complainant’s mark. The terms "cheap" and "cigarettes" do not distinguish the mark so as to alleviate potential consumer confusion regarding association of the domain name with Complainant and its products. Use of the term "cigarettes" would be expected in connection with Complainant’s mark. The typical Internet user might be less likely to assume that Complainant would itself refer to its products as "cheap". However, when used in connection with Complainant’s mark, the disputed domain name would likely attract those interested in purchasing Complainant’s trademarked products to Respondent’s website on the basis of an association with those products, and would thus divert customers from Complainant’s own distribution channels. In the circumstances of this proceeding, the gTLD ".net" does not serve to distinguish the disputed domain name from Complainant’s mark.

The Panel determines that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use.

Respondent has not suggested a basis for the Panel to find that it has rights or legitimate interests in the disputed domain name. There is no evidence that it has been commonly known by the name, or that it engaged in legitimate non-commercial or fair use of the name without intent for commercial gain.

As evidenced by its sale of Complainant’s trademarked products on its website, Respondent was aware of Complainant’s mark when it registered the disputed domain name. Based on Complainant’s evidence, Respondent is not authorized to sell its products, and may be attempting to circumvent relevant tax regulations. The Panel concludes that Respondent did not use the name prior to notice of a dispute in connection with a bona fide offering of goods.

Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name, and has established the second element necessary for a finding of abusive domain name registration and use.

Respondent has used the disputed domain name to direct Internet users to a website that offers for sale the products of Complainant and competing cigarette producers. It undoubtedly did this for commercial gain. Respondent used Complainant’s mark to attract Internet users to a location where products of other enterprises are sold in a context in which this does not appear explicitly or implicitly to have been authorized by Complainant. Respondent’s web site contained no disclaimer of affiliation with Complainant. The Panel finds that Respondent has used the disputed domain name for commercial gain by creating confusion among Internet users as to Complainant’s sponsorship of or affiliation with Respondent’s website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has satisfied the third element necessary for a finding of abusive domain name registration and use by Respondent.

The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.

Based on its finding that the Respondent, Eddy Fitch, has engaged in abusive registration and use of the domain name <cheap-marlboro-cigarettes.net> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <cheap-marlboro-cigarettes.net> be transferred to the Complainant, Philip Morris Incorporated.