Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Lance Williams of San Francisco, California, United States of America, self-represented.
The disputed domain names <marlborocanna.com>, <marlboromarihuana.com>, <marlborom80.com> and <phillipmorrismarihuana.com> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2015. On March 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on April 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2015. The Response was filed with the Center on April 27, 2015.
In the Response, Respondent appeared to be willing to transfer some of the disputed domain names to Complainant. Accordingly, the Center invited Complainant to comment if it would like to suspend the proceedings for the purpose of settlement on April 27, 2015. The Center did not hear from Complainant in this matter by the specified due date of April 28, 2015. Accordingly, the Center informed the parties that it would proceed with the panel appointment on April 29, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 6, 2015. 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.
On May 12, 2015, Complainant submitted an unsolicited Supplemental Filing in reply to Respondent's response (the "Supplemental Filing"). Complainant did not seek to suspend the proceedings for the purpose of settlement. On May 27, 2015, Respondent submitted an unsolicited email claiming that it would like to submit evidence to support its case.
Complainant, Philip Morris USA, Inc., is a corporation organized and existing under the laws of the Commonwealth of Virginia. Complainant manufactures, markets and sells cigarettes in the United States. Complainant is the exclusive owner in the United States of federal trademark registrations in and to the MARLBORO mark for cigarettes. Complainant has submitted as Annex C to the Complaint copies of its United States federal trademark registrations for the MARLBORO mark, the earliest of which is from April 14, 1908. Complainant also owns the domain names <philipmorris.com>, <philipmorris.net, <philipmorris.net> and <philipmorris.info>, the earliest of which was registered in 1995, and the domain name <marlboro.com>, which was registered in 2000.
Respondent is an individual based in San Francisco, California.
The disputed domain names were registered on or about November 17, 2014. Currently, the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> resolve to placeholder web pages and the disputed domain name <phillipmorrismarihuana.com> resolves to a page with click-through links to third-party websites.
Complainant asserts that its MARLBORO mark is famous in the United States and that it has obtained in the United States federal trademark registrations for the MARLBORO mark for cigarettes. Complainant also asserts that it and its various predecessor entities have used the MARLBORO mark since 1883 and, in particular, for several decades with tobacco and smoking-related products. Lastly, Complainant asserts that it has used the name "Philip Morris" continuously throughout the United States for over a century and that the "Philip Morris" name is well-known to the public as designating Complainant and its tobacco products.
Complainant contends that the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> are confusingly similar to Complainant's MARLBORO mark because each contains the MARLBORO mark in its entirety. Complainant also contends that the disputed domain name <phillipmorrismarihuana.com> is confusingly similar to Complainant's "Philip Morris" name because it contains in its entirety a slight misspelling of the well-known "Philip Morris" company name.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain names because Respondent has no connection of affiliation with Complainant, is not commonly known by any name or trade name that incorporates the MARLBORO mark or the name "Philip Morris", and has not received any license or authorization to register the disputed domain names. Complainant further contends that given Complainant's longstanding use of the MARLBORO mark and "Philip Morris" name in connection with tobacco products, Respondent's registration of the disputed domain names is no accident and is meant to capitalize on the association between Complainant's MARLBORO mark and "Philip Morris" name with tobacco products. Complainant also argues that the use of the disputed domain name <phillipmorrismarihuana.com> in connection with a directory website displaying links to third-party websites does not establish a legitimate interest in this disputed domain name.
Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith since Respondent had actual prior knowledge of Complainant's well-known MARLBORO mark and "Philip Morris" name. Complainant also contends that Respondent's registration of the disputed domain names creates a form of initial interest confusion by attracting Internet users to the disputed domain names based on the MARLBORO mark and "Philip Morris" name. Complainant further argues that Respondent has acted in bad faith by registering domain names that combine Complainant's name and marks with references to "marihuana", a misspelling of "marijuna", a substance that is unlawful under United States federal law. Lastly, Complainant asserts that Respondent's bad faith is established by the fact that Respondent has passively held the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> since registering them in November 2014, and by Respondent's use of the disputed domain name <phillipmorrismarihuana.com> in connection with a website displaying pay-per-click advertisements.
Respondent contends that he has acted in good faith and has not sought to take advantage of any rights Complainant might have in the MARLBORO mark and "Philip Morris" name. Respondent asserts that while Complainant owns a registration for the MARLBORO trademark in connection with cigarettes, there are other coexisting uses of the name Marlboro such as the name of a town in New Jersey. Respondent contends that he registered the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> for use with a planned medical marijuana business/dispensary in Marlboro, New Jersey. With regard to the disputed domain name <phillipmorrismarihuana.com>, Respondent contends that he registered such on behalf of his friend Phillip Morris who thought it would be "pretty cool" if he could get a domain name with his name and the term "marihuana".
Respondent argues that the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> are not identical or confusingly similar to Complainant's MARLBORO mark, as the use of the town name Marlboro in connection with a business in Marlboro, New Jersey catering only to people in Marlboro, New Jersey, will not be confused with Complainant's MARLBORO mark for cigarettes.
Respondent contends that he has a legitimate interest in the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> as he registered these disputed domain names for use with his claimed medical marijuana business in Marlboro, New Jersey, and that the use of the town name, Marlboro, to connect his business to the town is legitimate and no different from the many businesses in Marlboro, New Jersey that use the Marlboro name as part of their business names. Respondent also asserts that his use of terms such as "cannabis", "m80", or "marihuana" with the Marlboro name is legitimate inasmuch as marijuana is legal for medical use in New Jersey.
Respondent further contends that he has not acted in bad faith since having registered the disputed domain names and that no bad faith has been proven pursuant to the Policy.
Lastly, Respondent offers to transfer three of the disputed domain names to Complainant, although it is not altogether clear which three disputed domain names are to be transferred. Respondent indicates that his friend Phillip Morris is willing to transfer the disputed domain name <phillipmorrismarihuana.com> to Complainant as a show of good faith. As to the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com>, Respondent says that he only wants to retain one of three disputed domain names, but does not specify which one.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Before addressing the above, there are two preliminary points to be addressed: (1) Complainant's Supplemental Filing and Respondent's late email and (2) Respondent's consent to transfer three of the disputed domain names.
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many UDRP panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent's Response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of Complainant's Supplemental Filing or which would require the Panel to allow Respondent to also submit a supplemental filing to address points made by Complainant in its Supplemental Filing. The Panel therefore declines to accept Complainant's Supplemental Filing and Respondent's late email communication.
While Respondent has advised in his Response that he is willing to transfer three of the disputed domain names to Complainant, Respondent has not specified which three disputed domain names he is agreeing to transfer. In addition, given that the parties have submitted arguments and contentions in this matter, the Panel is of the view that pursuant to the Policy and the Rules it cannot order a transfer without due consideration of the merits.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1. Complainant has provided evidence that it owns a trademark registration for the MARLBORO mark in the United States.
With respect to the "Philip Morris" name, Complainant has put forth evidence showing that it has used the "Philip Morris" name for many years and that the public associates the "Philip Morris" name with Complainant's tobacco products. Indeed, the Panel recognizes that the "Philip Morris" name is well-known in the United States in relation to tobacco products and that several prior UDRP panels have found that Complainant has rights in and to the "Philip Morris" name. Consequently, for purposes of paragraph 4(a)(i) of the Policy, Complainant has the requisite rights in the "Philip Morris" name.
With Complainant's rights in the MARLBORO mark and "Philip Morris" name established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain ".com") are identical or confusingly similar with Complainant's mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> are confusingly similar to the MARLBORO mark as each incorporates the MARLBORO mark in its entirety at the head of each disputed domain name. The disputed domain name <phillipmorrismarihuana.com> is likewise confusingly similar to the "Philip Morris" name as it incorporates the nearly identical variant "Phillip Morris" (Phillip with two "l"s) at the head of the disputed domain name. The addition of generic terms in the disputed domain names related to marijuana does not diminish the confusing similarity and, in fact, heightens the confusion by suggesting that the disputed domain names are somehow related to the well-known "Philip Morris" company or the MARLBORO brand. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the MARLBORO mark and "Philip Morris" name and in showing that the disputed domain names are confusingly similar to that its trademark and company name.
Under paragraph 4(a)(ii) of the Policy, complainant must make a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once complainant makes such a prima facie showing, the burden of production shifts to respondent, the burden of proof always remains on complainant. If respondent fails to come forward with evidence showing rights or legitimate interests, complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is questionable whether Respondent has any rights or a legitimate interests in the disputed domain names. While Respondent argues that he registered the disputed domain names for a planned medical marijuana business in Marlboro, New Jersey, Respondent has not provided a single piece of evidence to support his claim. In a UDRP proceeding the panel is constrained to the record placed before it and does not have the benefit of a full hearing with live witnesses. The Panel is tasked with determining whether on the evidence before it respondent has a right or legitimate interest in a particular disputed domain name such as by making or preparing to make a bona fide or fair use of the disputed domain name in connection with a product or service. Given this constraint, the quality of the evidence presented is of paramount importance and a panel must determine whether the evidence submitted by a party is credible, reliable and/or convincing. Mere factual allegations unsupported by any evidence should not be given any weight. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainant or respondent could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.
Here, Respondent's claim to have registered the disputed domain names for a claimed medical marijuana business/dispensary in Marlboro is not credible. Respondent did not provide any evidence showing, for example, that he has been trying to open a medical marijuana dispensary in Marlboro, New Jersey or that he had "found a possible place to rent" for such. Nor did Respondent provide any evidence regarding his purportedly upcoming website for his planned medical marijuana business. Similarly, with regard to the claimed friend with the name "Phillip Morris", at the very least Respondent could have provided a copy of an official government-issued identification (such as a driver's permit, passport or other official ID) for this individual. Simply put, Respondent's failure to submit any evidence to support his claims not only undermines his contentions, but creates a serious question as to the veracity of the claims.
Given that Complainant has established with sufficient evidence that it owns rights in the MARLBORO mark and "Philip Morris" name and that the MARLBORO mark and "Philip Morris" name have been recognized as well-known in the United States, and given Respondent's above noted actions and the fact that the disputed domain names have merely been parked since registration, the Panel concludes that Respondent's registration and use of the disputed domain names does not constitute a right or a legitimate interest and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain names. As Respondent, although given an opportunity to present its case, simply asserted factual allegations with no credible evidentiary support, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant's prima facie case. Complainant thus prevails on this element of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered disputed domain names that fully incorporate Complainant's MARLBORO mark and a variant of Complainant's "Philip Morris" name in connection with common terms related to marijuana. Such combination of common terms which relate to a substance that can be smoked, and which in several states in the United States is legal for medical purposes, creates a likelihood of confusion by suggesting to consumers that the disputed domain names concern marijuana-related products or services under the MARLBORO brand or "Philip Morris" name, which are both associated by consumers with smoking-related products. Indeed, the disputed domain names could be seen as suggesting that Complainant is offering marijuana-related products under its MARLBORO mark or "Philp Morris" name. Given that Respondent has acknowledged Complainant's rights in the MARLBORO mark and "Philip Morris" name in relation to cigarettes, it is thus clear that he was aware of Complainant and its MARLBORO mark when he registered the disputed domain names. The fact that Respondent has failed to come forward with any documentary or credible evidence to support his claim that he registered the disputed domain names for his planned medical marijuana business in Marlboro, New Jersey, or for his alleged friend "Phillip Morris", suggests that Respondent's claims are pretextual and meant to sweep aside the fact that Respondent targeted Complainant and its MARLBORO mark and "Philip Morris" name.
Moreover, given that Respondent has passively held the disputed domain names <marlboromarihuana.com>, <marlborom80.com> and <marlborocanna.com> since November 2014 and used the disputed domain name <phillipmorrismarihuana.com> with a click-through portal since November 2014, the Panel can only infer that Respondent's actions have been undertaken in bad faith as per paragraph 4(b)(iv) of the Policy and for purposes of capitalizing on the fame associated with the MARLBORO mark and Complainant's "Philip Morris" name.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 names <marlborocanna.com>, <marlboromarihuana.com>, <marlborom80.com> and <phillipmorrismarihuana.com> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: May 27, 1015