WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Masayoshi Hoshikawa / Zombie Domain

Case No. D2015-1133

1. The Parties

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

The Respondent is Masayoshi Hoshikawa / Zombie Domain of Singapore, Singapore.

2. The Domain Name and Registrar

The disputed domain name <marlborohose.org> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2015. On July 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2015, 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.

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 July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Respondent submitted an informal email communication to the Center on August 5, 2015. The Center notified the Parties of the commencement of the Panel appointment process on August 10, 2015.

The Center appointed Fleur Hinton as the sole panelist in this matter on August 17, 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.

4. Factual Background

The Complainant owns the trade mark MARLBORO. The Complainant or its predecessors commenced manufacturing and selling cigarettes bearing the trademark in 1883. It has registrations around the world and its oldest registration is in the United States of America and dates from 1908. The Complainant has promoted the trademark substantially all over the world. The Complainant has its own website at “www.marlboro.com” where smokers over the age of twenty one are able to access information about the Complainant and its products.

The Respondent registered the disputed domain name in 2015. The Respondent uses it in respect of a website which provides information on choosing presents for newly born babies depending on the person’s relationship with the parents of the baby.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s MARLBORO trademark. The Complainant’s trademark is very well-known and has been found by panels in a variety of UDRP decisions such as Phillip Morris USA Inc v. privacyprotect.org/Paundrayana W, WIPO Case No. D2012-0660 to be famous. The Complainant’s registration of the trademark satisfies the requirement of establishing that it has rights in it. Numerous panels have found that a domain name which encompasses a trademark in its entirety is confusingly similar to that trademark. They have also found that the generic Top-Level Domain (gTLD) is typically to be ignored when making that comparison.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection either with the Complainant or any of its affiliates. It is not known by the disputed domain name and it is not identified by that name in the WhoIs record. It has not been licensed by the Complainant to use the disputed domain name. It argues that the Respondent’s adoption of the disputed domain name encompassing the trademark was done with the aim of attracting consumers to its website and that this use cannot confer any rights or legitimate interests on the Respondent.

The Complainant submits that Respondent registered and is using the disputed domain name in bad faith. Because the Complainant’s trade mark is so famous, the Complainant argues that the Respondent registered the disputed domain name knowing that it was using the Complainant’s trademark. Further, either a trademark search or any sort of Internet search would have revealed the Complainant’s ownership of the trademark.

The Complainant argues that the use of the disputed domain name itself is a bad faith use. It is a use which aims to attract Internet users to its website by the unauthorized use of the Complainant’s trademark.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In its August 5, 2015 email, referred to in the Procedural History, the Respondent wrote as follows (sic throughout):

“We don’t have any rights for Marboro, but the domain name is ‘marlborohose.org’. The complainant’s right is about cigarette. I don’t think it covers ‘hose’. In addition, the current website is not an e-commerce site and there are no words about cigarette (in Japaese タバコ, 煙草, たばこ) Therefore I don’t think the current website prejudice the rights.
Regards,
Masayoshi Hoshikawa”.

6. Discussion and Findings

In order to come to a decision in this matter the Panel must decide whether the Complainant has established a case in accordance with the paragraph 4(a) of the Policy. Therefore, the Complainant must establish:

(i) that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant has many trademark registrations incorporating its trademark MARLBORO including its earliest registration in the United States of America dating from 1908. It is now well-established that a disputed domain name which encompasses a trademark will be found to be confusingly similar to that trademark. The gTLD suffix in this case, “.org”, is to be ignored in these circumstances in making this comparison. On this basis the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) records the consensus view that a complainant need only make out a prima facie case that the respondent lacks rights or legitimate interests, which shifts the burden of production to the respondent to come forward with appropriate argument or evidence in this regard. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not been authorized by the Complainant to use any domain name incorporating the MARLBORO trademark. The Respondent is not known by the disputed domain name, has not registered it as a trademark and has not been authorized by the Complainant to use it.

In its August 5, 2015 email, the Respondent appears to contend that its use of the disputed domain name is in some way legitimate because the website to which it resolves is not an “e-commerce” site and does not concern the Complainant’s field of business. The Panel disagrees: the Respondent’s unauthorized use of the Complainant’s highly distinctive and internationally famous mark to attract Internet users to its website cannot in these circumstances give rise to rights or legitimate interests.

The Panel finds that the Respondent has not rebutted the Complainant’s prima facie case and has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s MARLBORO trademark has been the subject of many UDRP decisions finding it to be famous. See, e.g., Phillip Morris USA Inc v. privacyprotect.org/Paundrayana W, supra; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614.

The Respondent has registered the disputed domain name which contains this famous trademark.

The Panel finds that the fact that the Respondent registered the disputed domain name despite the fame of the Complainant’s trademark demonstrates that the registration was made in bad faith.

The Panel finds that the Respondent, without authorization, uses the famous MARLBORO trademark within the disputed domain name to attract Internet users to its website, and that this is a use in bad faith.

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 <marlborohose.org> be transferred to the Complainant.

Fleur Hinton
Sole Panelist
Date: August 28, 2015