WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Prophet Partners Inc.

Case No. D2007-1614

1. The Parties

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

The Respondent is Prophet Partners Inc. of Flushing, New York, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <marlboro.biz> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2007. On November 1, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and confirming that the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or the “Policy”) applies to the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), and also the Restrictions Dispute Resolution Policy (the “RDRP”) and the Supplemental Rules for Restrictions Dispute Resolution Policy (the “RDRP Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), which apply to both UDRP and RDRP complaints, the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2007. The Response was filed with the Center December 3, 2007. Following communications with the Center, the Respondent submitted an amended Response on December 10, 2007. The Complainant submitted a supplemental filing on January 11, 2008, and the Respondent submitted a supplemental filing on January 18, 2008.

The Center appointed W. Scott Blackmer, Sandra A. Sellers and David E. Sorkin as panelists in this matter on January 18, 2008. The Panel finds that it was properly constituted. Each member of 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 is a Virginia corporation based in Richmond, Virginia. It is a wholly owned subsidiary of Altria Group, Inc., which is listed on the New York Stock Exchange. According to the Complaint and the Complainant’s website at “www.philipmorrisusa.com”, the Complainant is the largest cigarette manufacturer in the United States of America and has held that position for more than twenty years. The Complainant reported net revenues in 2006 of approximately US $18.5 billion.

The Complainant or its predecessors have sold cigarettes with a MARLBORO brand since 1883, “with the modern history of the brand beginning in 1955”. Among others, the following trademarks listed on the Principal Register of the Unites States Patent and Trademark Office (“USPTO”) are registered to the Complainant:

Several UDRP Panels have previously determined that the MARLBORO trademarks are widely-known in the United States of America and, indeed, internationally. See, e.g., Philip Morris USA Inc. v. Mary Shelly, WIPO Case No. D2006-1367 (“Business Week and Interbrand found that the MARLBORO trademark is the twelfth most valuable brand in the world”).

The Complainant registered the domain name <marlboro.com> in March 2000. That domain name resolves to the Complainant’s website at “www.smokersignup.com”, where adult Internet users may obtain coupons and tobacco product information “from Marlboro” (as well as information on how to quit smoking).

The Respondent is a New York corporation based in Flushing, New York. The Response characterizes the Respondent’s business as follows:

“Respondent is an Internet-based marketing company with 6,000+ generic and descriptive domain names (“Generics”), representing common words and phrases. Generics are primarily used to generate advertising revenue, by marketing to online consumers, through affiliate programs and pay-per-click (“PPC”) domain monetization services aka domain parking (“Parking”). Other than Generics, Respondent doesn’t maintain any inventory of goods. To supplement revenue, Respondent occasionally sells/leases its Generics. Respondent has a strict trademark policy of not selling/leasing domain names to trademark holders, their competitors or their agents.” (Footnote omitted.

The Respondent registered the Domain Name on August 26, 2005. The Complainant furnished a printout of the website to which the Domain Name resolved on October 7, 2005. Headed simply with the Domain Name itself, the invitation “Inquire about this domain” appeared above advertising links prominently including “Marlboro”, “Marlboro Cigarette”, “discount cigarette”, “cigarette”, “cheap cigarette”, “tax free cigarette”, “winston cigarette”, “camel cigarette”, “duty free cigarette”, “cigarette online”. Advertising links in unrelated categories such as “airline tickets” and “business opportunities” were also featured.

Counsel for the Complainant sent the Respondent a cease-and-desist letter on September 5, 2007. The Respondent replied on September 12, 2007, arguing that the Domain Name is a non-infringing “generic”, since it is a geographic identifier of several places mentioned in the Wikipedia article on “Marlboro”. These locations include Marlboro Township, New Jersey (population 38,500); Marlboro, New York (population 2,339); Marlboro, Vermont (population 978, home of Marlboro College); Marlboro, Virginia (population not given); Upper Marlboro, Maryland (population 648); and Marlboro County, South Carolina (population 28,021). Many of these places were reputedly named after the (differently spelled) town of Marlborough in Wiltshire, England. The Respondent asserted that its business was Internet marketing, “not cigarettes or tobacco products”, and that the Domain Name was not likely to cause confusion.

Nevertheless, following the Complainant’s cease-and-desist letter, the Respondent altered the website associated with the Domain Name to eliminate home-page links to advertisers of cigarettes and other tobacco products. The Respondent also added a “Legal Disclaimer” at the bottom of that page:

“Marlboro.biz is NOT affiliated in any way with MARLBORO® cigarettes and is NOT for sale to Philip Morris USA Inc. or any competitor of or any other entity related to the aforementioned.”

The Response explains that on September 12, 2007, the day on which the Respondent replied to the Complainant’s cease-and-desist letter, the Respondent changed the name servers for the Domain Name from those at DomainSponsor.com, a third-party domain parking service that automatically generated advertising links such as those cited above, to the Respondent’s own servers.

The Domain Name currently resolves to a domain parking page with third-party advertising links in such categories as “Romance”, “Travel”, “Health”, “Business & Careers”. As before, the website includes a search feature, and it remains possible to type “marlboro” as a search query. A site visitor who does so is presented with a web page that lists links to the Complainant’s website and to those of retailers that sell cigarettes, both the Complainants’ and its competitors’.

The home page (or “landing page”) of the website associated with the Domain Name also still includes a link labeled “Inquire about marboro.biz”. Clicking on that link delivers an Internet user to a DomainSponsor.com website inviting visitors to enter an amount in US Dollars and “make an offer” to purchase the Domain Name. The Respondent’s website at “http://prophetpartners.com” does not currently list the Domain Name for sale, however, although the Complainant furnishes a printout of an earlier version of the Respondent’s website that listed the Domain Name among “Premium Domains for Sale or Lease”. The Respondent’s website, then and now, indicates that the Respondent will not entertain offers for .BIZ domain names for less than US $300. It also includes a statement that all of the listed domain names are “generic or descriptive in nature” and not for sale to trademark holders or their competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its famous MARLBORO trademarks, and in “all relevant respects” identical to the marks.

The Complainant asserts that the Respondent is not authorized to use the marks in the Domain Name and has done so in a bad-faith effort to create confusion and attract Internet users to its own website, and linked websites of third-party advertisers, for commercial gain in the form of pay-per-click advertising revenues. The Complainant also characterizes the Respondent as a domain name speculator with a pattern of registering domain names based on trademarks, leading to infringement by purchasers as well, under the pretense that the domain names represent geographic or family names.

The Complainant also argues that the Domain Name is not being used, or will not be used, primarily for a bona fide business or commercial purpose within the meaning of the RDRP governing “.biz” domain name disputes.

B. Respondent

The Respondent argues that the Domain Name is not identical to the Complainant’s marks, which are not standard-character marks. The Respondent contends further that the Domain Name is not confusingly similar to those marks because the name “Marlboro” is generic and used for a variety of places, businesses, and products, and also because Internet users would expect the Complainant to use a “.com” rather than a “.biz” generic top-level domain name.

The Respondent argues that it has a legitimate interest in reflecting a “generic”, primarily geographic, name in the Domain Name for the commercial purposes of pay-per-click advertising and potential sale or lease of the Domain Name.

As the Domain Name is used to facilitate the sale of goods and services by third parties, the Respondent argues that it registered the Domain Name primarily for commercial purposes, consistent with the purpose of the “.biz” generic top-level domain.

The Respondent asks the Panel to find that the Complaint represents an attempt at reverse domain name hijacking.

6. Discussion and Findings

Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the Domain Name is 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Overlong and Supplemental Filings

The Policy is designed to provide an expeditious and economical administrative remedy in appropriate domain name disputes. The time periods allowed for pleading and decision are short, and there is no provision for discovery or hearings as in judicial proceedings and formal arbitration. The Rules, paragraph 5(b)(i), contemplate that dispute resolution service providers such as the Center will adopt Supplemental Rules that may include “word and page limits and guidelines” (paragraph 1, “Definitions”). The Center’s Supplemental Rules, paragraph 10, limits the Complaint and the Response to 5000 words each.

The Center notified the Respondent on December 5, 2007 that the Response was apparently deficient in several respects, one of which was that it “substantially” exceeded the prescribed 5000-word limit. The Respondent accordingly submitted an amended Response, but the amended Response still runs to over 11,000 words (more than double the word limit), counting the text in the 207 footnotes.

The Panel is unwilling to simply reject the amended Response, particularly as the Respondent is not represented by counsel in this proceeding. However, in fairness to the Complainant, and in the interest of providing a reasonably swift resolution of the dispute as contemplated by the Policy, the Rules, and the Supplemental Rules, the Panel will not address in this Decision numerous points raised in the amended Response that are not strictly germane to the elements of a UDRP and RDRP complaint and response. Having examined both the original and amended Response, the Panel concludes that such extraneous material would not affect the outcome of the proceeding in any event.

Both parties have also submitted a supplemental filing following the Complaint and amended Response. The Rules do not explicitly provide for supplemental filings in a UDRP or RDRP proceeding. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP and RDRP Panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider newly available evidence or provide a fair opportunity to respond to new arguments.

The Complainant submitted an eight-page Reply to the Response, with several pages of attachments. The Panel accepts this filing only to the extent that it addresses the Respondent’s charge of reverse domain name hijacking; otherwise, it does not contribute material new evidence or argument.

The Respondent’s supplemental filings include an email offering corrections in two of the dates mentioned in the Center’s case file as transmitted to the parties and the Panel, and a further two-page submission dated January 18, 2008, in which the Respondent requested inter alia that the Panel not admit the Complainant’s reply. The above-referred dates are not material to this decision, and (in light of the Panel’s observations in the paragraph above) the Panel accordingly finds no need to address the Respondent’s communications further here.

B. Identical or Confusingly Similar

It is not disputed that the Complainant holds registered MARLBORO marks.

The Respondent correctly observes that these are not standard-character trademarks and, therefore, are not identical to the Domain Name. The MARLBORO name is the prominent feature of each of these marks, however, whether presented in stylized letters alone or with a graphic design, and the record reflects very strong brand awareness of the MARLBORO name. Thus, while the Domain Name may not be “identical” to a MARLBORO trademark, it is at least confusingly similar to the MARLBORO marks. See, e.g., Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300 (referring to the “dominant thrust” of a mark from the perspective of a “reasonable bystander”, where the mark included design elements and a slogan in addition to the name of the Complainant).

The Respondent argues that actual confusion is unlikely, because “Marlboro” is the name of several places and a variety of businesses, and also because large corporations are known to favor “.com” over “.biz” domain names. But this element of the Policy is concerned with the appearance of confusing similarity, to an Internet user, between the Domain Name itself and a trademark, without reference to evidence of actual confusion or presumptions about which generic top-level domains a trademark owner would be expected to use or not to use.

The Panel finds that the Complaint satisfies the first element of the UDRP.

C. Rights or Legitimate Interests

The UDRP, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

The Respondent does not dispute the Complainant’s assertion that it has never authorized the Respondent to use the MARLBORO mark. The Respondent contends instead that its use of the Domain Name is in connection with a legitimate business of domain name resale and Internet advertising using “generic” domain names. The Respondent argues that the Complainant does not have exclusive rights to use the “Marlboro” name, because it appears in many geographic names, business names, and even third-party trademarks.

In some circumstances, acquiring a domain name comprised of a dictionary or genuinely descriptive term for potential resale and using it for a parking website with pay-per-click, third-party advertising may be considered consistent with a legitimate offering of goods and services. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF No. 0285459 (“As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy”); Weather Shield Mfg., Inc. v. Lori Phan, WIPO Case No. D2007-1247 (resale and advertising may in some contexts represent legitimate interests, “particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks”). If, on the contrary, the Respondent chose the Domain Name in an effort to capitalize on the Complainant’s famous trademark, this could not be considered a use in connection with a “bona fide” offering of goods or services. That issue is more fully developed below in considering the bad-faith element of the Complaint.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

The Complainant asserts that the Respondent’s use of a Domain Name confusingly similar to its famous trademarks, to attract Internet users to an advertising directory website, clearly matches this instance of bad faith.

The Respondent points out that it was the subject of a 2007 UDRP proceeding, Fry’s Electronics Inc. v. Prophet Partners Inc., No. 49 413 00001 06 (AAA), where it was not found to have acted in bad faith. The panel in that proceeding denied transfer of the disputed domain name <frys.us>, concluding as follows:

“There is no evidence that Respondent was aware of Complainant at the time it registered the domain name. Indeed, the evidence suggests that Respondent was registering a large number of generic and surname words, with no particular interest in targeting a registered trademark of Complainant.”

In the current proceeding, by contrast, it is implausible that the Respondent was unaware of the MARLBORO mark, one of the best-known trademarks in the United States of America, where the Respondent is located. The Respondent does not deny such knowledge. The Domain Name is not a dictionary word. It is a place name for several rather small places, and none of them are featured in any way on the websites to which the Domain Name has resolved.

The Respondent acknowledges that its inventory of domain names offered for sale at its website at “http://prophetpartners.com” includes other domain names, such as <glazier.us>, <spalding.us>, <clarion.biz>, <starwood.biz>, <stregis.biz>, and <wyndham.biz>, that are both identical to third-party trademarks and to geographic or family names. The Respondent argues that this is a legitimate use of “generic” names, but the Panel notes that these domain names do not resolve to websites with content concerning those places or families but rather to domain parking websites with unrelated advertising links, just as in the case of the Domain Name.

Given the Respondent’s practices and the fame of the MARLBORO mark, it is more likely that the Respondent selected the Domain Name for its inventory of domain names precisely, and for a pay-per-click advertising website, because the Domain Name is confusingly similar to one of the most famous trademarks in the world, rather than for any “generic”, geographical signification of the name.

The Respondent admits its knowledge of the Complainant’s famous mark in the Response: “Given the fame of Complainant’s Mark, Respondent has always used a generic parking page for Domain.” This remark runs counter to the Respondent’s denial of any intent to create confusion by using a domain name confusingly similar to the famous MARLBORO trademark. Moreover, the Respondent concedes that the initial parking website from DomainSponsor.com “briefly” served up automated advertising links for cigarettes but argues that since the Respondent switched the Domain Name to its own name servers the associated website has shown only unrelated, “generic” advertising links.

The Respondent remains accountable for the commercial use of the Domain Name, even if it chooses to place operation of the related website in the hands of a third-party Internet advertising network. Moreover, the Respondent seems to be laboring under the misimpression that using the fame of the Complainant’s mark to attract Internet users to “generic” advertising is legitimate, so long as the Respondent tries not to advertise the products of the Complainant or its competitors (although such advertisements may still be displayed in response to a search query on the website). However, the Policy, paragraph 4(b)(iv), clearly gives as an example of bad faith an intentional attempt “to attract, for commercial gain, Internet users to your web site . . . by creating a likelihood of confusion with the complainant’s mark”. The Respondent’s deliberate use of a widely-known mark for a confusingly similar Domain Name used in Internet advertising and offered for resale fits this example of bad-faith registration and use.

The Panel concludes, therefore, that the Complainant has established both the second and third elements of the UDRP Complaint.

E. Bona Fide Business or Commercial Purpose

The Complainant cites the Restrictions Dispute Resolution Policy (“RDRP”) as another ground for relief in this combined UDRP / RDRP administrative proceeding. The Domain Name is in the “.biz” generic top-level domain and therefore covered by the RDRP, which is incorporated by reference in “.biz” registration agreements (see “www.neulevel.biz/ardp/docs/rdrp.html”). The RDRP requires that the holder of a “.biz” domain name registration use it primarily for a “bona fide business or commercial purpose” (RDRP, paragraph 4(a)).

The complainant asserting a violation of this policy bears the burden of proving that the respondent is not primarily using the domain name for such purposes. If proven, this claim warrants the transfer or cancellation of a “.biz” domain name, independently of the UDRP elements. Although the Panel finds for the Complainant under the UDRP, as the Complaint is a combined Complaint under both policies, the Panel notes the following for completeness.

The RDRP defines and illustrates “bona fide business or commercial use” in paragraphs 4 (b) and (c) as follows:

“b. Bona Fide Business or Commercial Use. Bona fide business or commercial use shall mean the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

i. to exchange goods, services, or property of any kind; or

ii. in the ordinary course of trade or business; or

ii. to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.”

“c. Not a Bona Fide Business or Commercial Use. Registering a domain name solely for the purposes identified below shall not constitute a ‘bona fide business or commercial use’ of that domain name:

i. selling, trading or leasing the domain name for compensation, or

ii. the unsolicited offering to sell, trade or lease the domain name for compensation.

iii. For illustration purposes, the following shall not constitute a ‘bona fide business or commercial use’ of a domain name:

a. Using or intending to use the domain name exclusively for personal, noncommercial purposes; or

b. Using or intending to use the domain name exclusively for the expression of noncommercial ideas (e.g., registering exclusively to criticize or otherwise express an opinion on the products or services of ABC company, with no other intended business or commercial purpose).”

If the Respondent here had registered the Domain Name “solely for the purpose” of selling or leasing the Domain Name, that would clearly not represent a “bona fide business or commercial use” (see RDRP, paragraphs 4(c)(i) and (ii)). The Respondent claims on the contrary that its primary purpose in registering the Domain Name was to use it for Internet-based marketing, specifically pay-per-click advertising. In fact, the Respondent appears to have used the Domain Name for that purpose from the beginning (while at the same time listing the Domain Name for sale or lease on the Respondent’s website at “http://prophetpartners.com”). Thus, RDRP paragraph 4(c) is not apposite; the Domain Name does not appear to have been registered “solely” for resale or leasing.

The question remains, however, whether the Respondent’s use of the Domain Name for pay-per-click advertising constitutes “bona fide business or commercial use” under RDRP paragraph 4(b). Arguably, pay-per-click advertising links to websites operated by third parties offering various goods and services may be said to “facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business”, as stated in paragraph 4(b)(iii) of the RDRP. The sense of the last disjunctive clause of that provision is not entirely clear, but advertising does normally “facilitate” the exchange of goods, services, information, or property.

It has been pointed out that the RDRP itself does not address bad faith. See, e.g., Dana Corporation v. Safineh Co. a/k/a Dana Co. a/k/a Ali Amiri, NAF No. FA222043:

“Complainant contends that Respondent’s use of <dana-co.biz> is not bona fide because Respondent registered the domain knowing that it infringed upon Complainant’s rights. However, the RDRP Policy only looks at the strict nature of the domain name user’s use. It does not consider bad faith. See Dana Corp. v. Common Sense Enters, FA155897 (Nat. Arb. Forum June 16, 2003) (‘Complainant’s speculation with regard to Respondent’s bad faith registration and use does not meet the requirements of the RDRP’).”

However, the RDRP does require actual or planned “bona fide” business or commercial use, and other panels have viewed trademark infringement as undermining a defense of bona fide business or commercial purpose. See, e.g., CEC Entertainment Concepts, L.P., a wholly owned subsidiary of CEC Entertainment, Inc. v. Andrew Boston a/k/a e element, NAF No. FA441941 (the Respondent’s planned use of the domain name at issue was not a bona fide business or commercial purpose, because “Respondent has no right to use Complainant’s registered trademark in such a manner”).

The Respondent in the current proceeding acknowledged, as discussed above, that it was aware of the fame of the Complainant’s mark and merely attempted (not always successfully) to avoid advertising the Complainant’s products or those of its competitors on the website associated with the Domain Name. The fact remains, however, that it had no right to use the Complainant’s mark even to advertise unrelated goods and services. The Respondent knowingly took advantage of the Complainant’s famous mark to generate pay-per-click advertising revenues. The Panel does not consider this business model for the Domain Name a “bona fide business or commercial purpose.”

Accordingly, the Panel holds that the Complainant has established its right to relief under the RDRP as well as the UDRP.

F. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Panel has concluded that the Complaint is well-founded, and there is no evidence in the record indicating that the Complaint was brought simply to harass the Respondent. The Panel, therefore, declines to hold that the Complaint represents an attempt at reverse domain name hijacking.

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the UDRP, Paragraph 4(i) of the RDRP, and Paragraph 15 of the Rules, the Panel orders that the Domain Name, <marlboro.biz>, be transferred to the Complainant.

W. Scott Blackmer
Presiding Panelist

Sandra A. Sellers
Panelist

David E. Sorkin
Panelist

Dated: February 8, 2008