WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Mary Shelly

Case No. D2006-1367

1. The Parties

The Complainant is Philip Morris USA Inc., Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Mary Shelly, New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names: <discount-marlboro-com.com>, <discount-marlboro-com.net>, <my-marlboro.com>, <my-marlboro.net>, <smoke-marlboro-cigarettes.com>, <smoke-marlboro-cigarettes.net>, <smoke-marlboro.com>, and <smoke-marlboro.net> are registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2006. On October 24, 2006, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain names at issue. On October 28, 2006, AAAQ.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names at issue and providing the contact details for the administrative, billing, and technical contact. 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 November 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2006.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 22, 2006. 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

(i) Philip Morris USA manufactures, markets, and sells cigarettes, including cigarettes under its famous MARLBORO and MARLBORO LIGHTS trademarks.

(ii) 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.

(ii) The Complainant is the registered owner of various trademarks on the Principal Register of the U.S. Patent and Trademark Office, all of which are valid, subsisting and incontestable pursuant to 15 U.S.C. § 1065:

(iv) These trademarks are among the most valuable trademarks in the world. Business Week and Interbrand found that the MARLBORO trademark is the twelfth most valuable brand in the world.

5. Parties’ Contentions

A. Complainant

(i) The Respondent has registered the domain names and is using them in conjunction with websites that are directories that provide links to other websites. Some of these other websites ultimately link to websites that are offering to sell and/or facilitate the illegal importation of the Complainant’s branded products manufactured for sale outside the United States to U.S. consumers, in violation of U.S. law.

(ii) On June 16, 2006, counsel for the Complainant wrote to the Respondent, stating that the Respondent’s registration and use of the Domain names infringed the Complainant’s valuable rights in the MARLBORO Trademarks.

(iii) A domain name that incorporates a famous mark is considered to be confusingly similar to that mark, despite the presence of other words.

The Respondent has no rights or legitimate interests in the domain names.

(iv) The Respondent has registered the domain names in bad faith by doing so knowing of Philip Morris USA’s rights in the MARLBORO trademark and the rest of the family of MARLBORO Trademarks.

(v) The Respondent has used the Domain names in bad faith in connection with active, smoking-related, commercial directory websites. The Respondent has attempted to attract, for commercial gain, Internet users to the infringing websites by creating a likelihood of confusion with the MARLBORO Trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain names are identical or confusingly similar to the Complainant’s trademarks or service marks;

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

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

A. Identical or Confusingly Similar

The Complainant registered MARLBORO as a trademark in the United States of America in 1908.

The domain names <discount-marlboro-com.com>, <discount-marlboro-com.net>, <my-marlboro.com>, <my-marlboro.net>, <smoke-marlboro-cigarettes.com>, <smoke-marlboro-cigarettes.net>, <smoke-marlboro.com>, and <smoke-marlboro.net> all incorporate the Complainant’s mark and, even though the marks include the presence of other words, in the Panel’s view, they are confusingly similar to the Complainant’s mark (see Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464; see also Dell Inc. v. Hiroshy, Inc., WIPO Case No. D2004-0721 (November 18,  2004) (finding that “if a domain name incorporates a famous mark in its entirety, it is confusingly similar to that mark despite the addition of other words”)

Therefore, the Panel finds that the domain names are confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain names. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain names; the Panel finds that the use of the domain names is not fair or noncommercial as the websites ultimately link to sites offering tobacco products.

The Respondent has not submitted a response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain names under paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain names pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the domain names in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “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”. As set forth above, the Complainant contends that the Respondent has violated paragraph 4(b)(iv) of the Policy, thus establishing bad faith.

The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(iv). The Respondent is, in using the domain names, attempting to attract, for commercial gain, Internet users to websites that ultimately link to websites which appear to facilitate the illegal importation of tobacco products. The mere fact of diverting users in this misleading manner is evidence of bad faith. See Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554 (March 9, 2000).

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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, <discount-marlboro-com.com>, <discount-marlboro-com.net>, <my-marlboro.com>, <my-marlboro.net>, <smoke-marlboro-cigarettes.com>, <smoke-marlboro-cigarettes.net>, <smoke-marlboro.com>, and <smoke-marlboro.net> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Dated: January 5, 2007