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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Sakaria Mohamoud mussafah

Case No. D2014-1667

1. The Parties

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

The Respondent is Sakaria Mohamoud mussafah of Abu Dhabi, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <marlboro.xyz> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2014. On September 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2014.

The Center appointed George R. F. Souter as the sole panelist in this matter on November 3, 2014. 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 Complainantmanufactures, markets, and sells cigarettes in the United States of America, including cigarettes under its MARLBORO trademark. Cigarettes bearing the MARLBORO trademark have been manufactured and sold by the Complainant and various predecessors in business since 1883.

Details of two US Federal registrations of the Complainant’s MARLBORO trademark, the earlier dating from 1908, have been supplied to the Panel.

The disputed domain name was registered on June 4, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant has drawn the Panel’s attention to various prior decisions under the UDRP, including Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306, in which its MARLBORO trademark has been recognized as famous.

The Complainant contends that the disputed domain name <marlboro.xyz> is identical or confusingly similar to its MARLBORO trademark, including its MARLBORO trademark in its entirety, with the addition solely of the irrelevant generic Top-Level Domain (“gTLD”) indicator “.xyz”.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in that the Respondent was never known by any name or trade name that incorporates the word “Marlboro”, nor has the Respondent received any license, authorization, or consent, express or implied, from the Complainant to use its MARLBORO trademark in a domain name or in any other manner.

The Complainant alleges that the disputed domain name was registered in bad faith.

The Complainant further alleges that the Respondent’s use of the disputed domain name, namely operating a directory site that has links to numerous other commercial sites, is use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel agrees with panels in prior UDRP proceedings concerning the Complainant’s MARLBORO trademark that the trademark can be regarded as famous.

It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the gTLD “.xyz” indicator to be irrelevant in the present case. What remains in the disputed domain name is the Complainant’s trademark in its entirety. Consequently, the disputed domain name is clearly identical or confusingly similar to the Complainant’s MARLBORO trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent did not take the opportunity afforded to him to advance any claim to rights or legitimate interests in the disputed domain name. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing an un-rebutted prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. In the circumstances of the present case, in the Panel’s opinion, the Respondent could not reasonably have been unaware of the Complainant’s rights in its MARLBORO trademark when it registered the disputed domain name. Further, the fact that the Respondent registered the disputed domain name a mere two days after the launch of the new top level domain name “.xyz” on June 2, 2014 convinces the Panel that the Respondent was deliberately and opportunistically attempting to benefit unfairly from the goodwill inherent in the Complainant’s MARLBORO trademark when it registered the disputed domain name. The Panel regards these circumstances as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith and the Panel so finds.

The Panel considers that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website operated under the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, as set out in paragraph 4(b)(iv) of the Policy. Consequently, the Panel finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the requirement of 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 name <marlboro.xyz> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: November 17, 2014

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