WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. private

Case No. D2005-0790

1. The Parties

The Complainant is Philip Morris USA Inc., New York, New York, United States of America, represented by Arnold & Porter LLP, United States of America.

The Respondent is listed in the Whois database as “private” with an e-mail address for the administrative contact listed as “workaholic@hotpop.com,” with no mailing address.

2. The Domain Names and Registrar

The disputed domain names <mistermarlboro.com> and <mrmarlboro.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2005. On July 25, 2005, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 25, 2005, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the available contact details for the administrative, billing and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2005. The Respondent contacted the Center on August 22, 2005, requesting an extension until August 29, 2005, to submit a response. On August 23, 2005, the Complainant agreed to the extension requested by the Respondent. On August 31, 2005, the Center sent an e-mail to Respondent inquiring about the status of its response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2005.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 25, 2005. 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

Complainant states in its Complaint that it manufactures, markets and sells cigarettes, including under the MARLBORO trademark, and that it (or its predecessors) have done so since 1883, with the “modern history” of the brand beginning in 1955.

Complainant states that it is the registered owner of U.S. Reg. No. 68,502, for the mark MARLBORO, registered on April 14, 1908. This statement is supported by a copy of the applicable certificate of registration provided as an exhibit to the Complaint. In addition, Complainant cited five U.S. federal trademark registrations containing the word MARLBORO owned by Complainant, all supported by copies of relevant certificates of registration.¹

Complainant states that BusinessWeek magazine has listed the MARLBORO brand as the tenth most-recognized brand in the world, as shown in a listing of “The Top 100 Brands” in the BusinessWeek issue dated August 2, 2004, provided by Complainant.

According to copies of Whois searches provided by Complainant, the domain names <mrmarlboro.com> and <mistermarlboro.com> were registered by Respondent on October 27, 2003.

5. Parties’ Contentions

A. Complainant

Complainant states that it sent a letter (a copy of which was provided by Complainant as an exhibit to the Complaint) to Respondent on March 1, 2005, demanding that Respondent cancel or assign to Complainant the domain name <mistermarlboro.com>. Complainant further states that it sent a letter (a copy of which was provided by Complainant as an exhibit to the Complaint) to Respondent on July 12, 2005, in which Complainant noted that Respondent also had registered the domain name <mrmarlboro.com>.

Complainant states that, on July 14, 2005, counsel for Complainant received a phone call from an anonymous person who acknowledged ownership of the <mistermarlboro.com> and <mrmarlboro.com> domain names and “also acknowledged his affiliation with the workaholic@hotpop.com email address.” Complainant states that this person refused to provide any further information or to transfer the domain names to Complainant; rather, he stated that he wanted to sell the domain names for a profit, either to Complainant or to another entity.²

Complainant states that, for “several months” prior to July 12, 2005, Respondent had used the domain names <mistermarlboro.com> and <mrmarlboro.com> in connection with an active, smoking-related website. However, Complainant states that, as of the date of its Complaint, the domain names <mistermarlboro.com> and <mrmarlboro.com> are associated with “parked” web pages.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain names <mistermarlboro.com> and <mrmarlboro.com> are 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 names <mistermarlboro.com> and <mrmarlboro.com>; and (iii) the domain names <mistermarlboro.com> and <mrmarlboro.com> have been registered and are being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the registrations cited by Complainant (and the certificates therefor provided as exhibits, together with the online searches conducted by the Panel indicating assignment of the registrations to Complainant), the Panel is convinced that Complainant has rights in the mark MARLBORO.

As to whether the domain names <mistermarlboro.com> and <mrmarlboro.com> are identical or confusingly similar to Complainant’s MARLBORO trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mrmarlboro” and “mistermarlboro”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Panel agrees with Complainant that the mere addition of a word (in this case, “mr” and “mister”) to a trademark is insufficient to overcome a finding of confusing similarity under the Policy. See Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215 (finding the words “girls” to be a “neutral addition” to the mark REVLON in a case ordering the transfer of the domain name <revlongirls.com> to the owner of the trademark REVLON).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, “https://www.wipo.int/amc/en/domains/search/overview/index.html” (visited November 8, 2005).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the domain names <mistermarlboro.com> and <mrmarlboro.com>, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

The Panel does not address the issue of whether the “smoking-related” website allegedly used by Respondent in connection with the domain names is evidence of bad faith, given the absence of any supporting documentation of same, whether website printouts or a declaration by Complainant. However, the Panel finds evidence of bad faith as a result of Respondent’s inconceivable legitimate use of the domain names given the longtime use of the MARLBORO trademarks and strength of its brand, see, e.g., Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071 (“it is not possible for the Respondent to have been unaware of the Complainant’s ‘MICROSOFT’ brand and associated trademarks prior to registering the Domain Name”); Respondent’s alleged offer to sell the domain names for a profit, see, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (“[a]lthough no specific amount of money was asked for the domain names at issue…, the purpose of the email [to Complainant] is apparently to offer the domain names for a consideration which exceeds the out-of-pocket registration costs”); and Respondent’s failure to provide complete contact information in the Whois record for either of the domain names. See, e.g., Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <mistermarlboro.com> and <mrmarlboro.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Date: November 8, 2005

¹ Each of the six trademark registration certificates lists an entity other than Philip Morris USA Inc. as the owner; however, the Panel conducted an online search of the U.S. Patent and Trademark Office’s Trademark Electronic Search System and independently confirmed that each of these six registrations has been assigned to Philip Morris USA Inc. – an important fact that could have been explained by Complainant.

² Although the Panel has no reason to question Complainant’s recitation of this phone call, the Panel would have preferred that Complainant provide a declaration from counsel for Complainant who participated in this phone call. See Rules, paragraph 10(e).