WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Mette Rasmussen, BornBring

Case No. D2016-0233

1. The Parties

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

The Respondent is Mette Rasmussen, BornBring of Gudhjem, Denmark, self-represented.

2. The Domain Name and Registrar

The disputed domain name <marlborosmokers.com> 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 February 8, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. An automatic extension of the Response due date was granted until March 17, 2016 under paragraph 5(b) of the Rules. The late Response was filed with the Center on March 18, 2016.

The Center appointed Luca Barbero as the sole panelist in this matter on March 29, 2016. 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 is a well-known manufacturer and supplier of tobacco products. The Complainant and its predecessor entities have been supplying tobacco and smoking-related products under trademarks incorporating the word “Marlboro” since 1883.

The Complainant is the owner, amongst others, of the following trademark registrations (hereinafter “the MARLBORO Trademarks”): United States trademark registration Nos. 68,502 for MARLBORO (figurative mark), registered on April 14, 1908 for cigarettes in International class 34; and 938,510 for MARLBOROFILTER CIGARETTES (figurative mark), registered on July 25, 1972 for cigarettes in International class 34.

The Complainant is also the owner of the domain name <marlboro.com>, registered on March 6, 2000 and pointed to the Complainant’s web site “www.marlboro.com”, which enables access to information regarding the Complainant, its MARLBORO products and special offers to age-verified 21-year or older adult smokers.

The disputed domain name <marlborosmokers.com> was registered on November 11, 2015 and is pointed to a web page indicating that a website will be coming soon.

5. Parties’ Contentions

A. Complainant

The Complainant states that, as a result of the substantial time, effort, and money spent in advertising and promoting the MARLBORO Trademarks throughout the United States, the Complainant has developed substantial goodwill in the MARLBORO Trademarks, which have become distinctive and are uniquely associated with the Complainant and its products. The Complainant highlights that numerous WIPO administrative panels already determined that the MARLBORO Trademarks are famous.

The Complainant contends that the disputed domain name is confusingly similar to the MARLBORO Trademarks since the addition of the generic word “smokers” to MARLBORO in the disputed domain name does not distinguish the disputed domain name from the MARLBORO Trademarks and indeed exacerbates the confusion, because the MARLBORO mark signifies to the relevant public, i.e., adult smokers, the Complainant’s famous brand of cigarettes.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name since it has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO Trademarks. The Complainant also states that the Respondent was never known by any name or trade name that incorporates MARLBORO, that the Respondent has never sought or obtained any trademark registrations for MARLBORO or any variation thereof and the Respondent has not received any license, authorization, or consent - express or implied - to use the MARLBORO Trademarks in a domain name or in any other manner at any time.

The Complainant also notes that, before any notice to the Respondent of this dispute, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services, and claims that the Respondent is not making a legitimate noncommercial or fair use without intent of commercial gain, as the disputed domain name is pointed merely to a page under construction.

The Complainant states that the Respondent’s misappropriation of the trademark MARLBORO by its inclusion in the disputed domain name is no accident, and that clearly, the Respondent chose to use this trademark to divert Internet users from the Complainant’s web site by capitalizing on the public recognition of the MARLBORO Trademarks.

The Complainant cites Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, stating that, when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,” and concludes that illegitimate users such as the Respondent could have no legitimate interest in the trademark. The Complainant also underlines that a previous panel in Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790, commented that it was “inconceivable” for the respondent to have a legitimate use of a domain name incorporating the MARLBORO Trademarks “given the longtime use of the MARLBORO trademarks and strength of its brand”.

As to the bad faith requirement, the Complainant contends that the Respondent registered the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in the MARLBORO Trademarks, which greatly predate the registration of the disputed domain name. The Complainant points out that a simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO Trademarks as source identifiers for its tobacco products, and that the Complainant’s rights in the MARLBORO Trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the PTO records that are readily accessible online. The Complainant also claims that the Respondent is deemed to have constructive notice of the Complainant’s trademark rights by virtue of the Complainant’s federal registrations for the MARLBORO Trademarks.

With reference to the use of the disputed domain name, the Complainant asserts that the Respondent’s use of the MARLBORO Trademarks to divert Internet users from the Complainant’s website demonstrates bad faith use under the Policy. The Complainant also states that, since the disputed domain name is pointed to a web page stating that a website would be coming soon, the Respondent intends to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating, in the near future, a likelihood of confusion with the Complainant’s MARLBORO Trademarks as to source, sponsorship, or endorsement by the Complainant of the Respondent’s web site or a product or service sold on the Respondent’s website.

The Complainant claims that, furthermore, the registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users to the disputed domain name based on the use of the MARLBORO Trademarks.

B. Respondent

Further to the notification of the Complaint, correspondence was sent to the Center from Mr. Rolf Sonne Rasmussen, who claimed to be the son of the named Respondent and actual holder of the disputed domain name.

In its late Response, Mr. Rasmussen stated that:

- the disputed domain name “falls under “confusing similar” at its best” and that “brands can have a new meaning after time “Marlboro” being synonymous with e.g cigarettes”. On the other hand, the Respondent does not dispute that MARLBORO is a well-known trademark in many countries among all age groups and segments of society;

- the disputed domain name was bought on November 11, 2015 and has not been used it since then;

- the web page to which the disputed domain name resolves was probably made by the concerned Registrar;

- he did not buy the disputed domain name to capitalize on the Complainant’s trademark or with any intent of harming its brand;

- he spent time, friend’s goodwill and had to assure its mother, who is sick, that there is no case, as she received the Complaint by courier;

- he has no problem with stating its reason for buying the disputed domain name and that it will elaborate, use facts to back all arguments.

6. Discussion and Findings

According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

(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. Preliminary issues:

i) Identity of Respondent

As mentioned above, replies to the Complainant and a late Response were submitted to the Center by Mr. Rolf Sonne Rasmussen, who claimed to be the actual holder of the disputed domain name. He mentioned to have indicated the name of his mother and her company in the WhoIs records but did not provide any additional information about the reasons for registering the disputed domain name in her name and whether she was at any time aware of, and actually involved in, the registration of the disputed domain name.

In view of the circumstances of the case, the Panel has decided to treat both the named registrant and Mr. Rolf Sonne Rasmussen as Respondents in this case. Therefore, any reference to “the Respondent” in this decision shall be read as referred to both of them.

ii) Late filing of the Response

As detailed in the Procedural History, upon receipt of the Complaint, the Respondent requested an automatic extension of the Response due date, which was granted by the Center until March 17, 2016 under paragraph 5(b) of the Rules. The Respondent submitted its late Response on March 18, 2016.

Pursuant to paragraph 14(a) of the Rules, in case of a late Response, the Panel should proceed to decision based on the Complaint only, unless it determines, exercising its discretion, to consider the Response where “exceptional circumstances” exist.

Since the Response was filed only one day after the expiry of the extended Response due date and the lateness of Response has not prejudiced the Complainant nor has it delayed the Decision in this administrative proceeding, the Panel has decided to admit and consider the Response. See, along these lines, AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384; and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710.

B. Identical or Confusingly Similar

The Complainant has established rights in the trademark MARLBORO based on the United States registrations mentioned above.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it incorporates it in its entirety with the mere addition of the generic term “smokers”, which is insufficient to exclude confusing similarity. In fact, this term enhances the confusion as it describes consumers of the Complainant’s MARLBORO-branded products.

In view of the above, the Panel finds that the requirements prescribed by paragraph 4(a)(i) of the Policy have been met.

C. Rights or Legitimate Interests

It is well established that a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, or otherwise any rights or legitimate interests in the disputed domain name.

According to the documents and statements submitted, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.

In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.

Furthermore, there is no evidence on records that the Respondent might have used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute, as the disputed domain name has been pointed to a mere coming soon web page. The Respondent has also failed to provide any explanations as to the reasons why it registered the disputed domain name confusingly similar to the Complainant’s well-known trademark.

In view of the distinctive and well-known character of the Complainant’s trademark MARLBORO and in line with prior UDRP panel decisions including the ones cited by the Complainant and mentioned above, the Panel also finds that the trademark MARLBORO is not one that traders would legitimately adopt unless seeking to create an impression of an association with the Complainant.

The Panel therefore finds that the Complainant has proven the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

In light of the Complainant’s prior registration and use of the trademark MARLBORO in the United States and abroad, and in view of the well-known character of the trademark worldwide – as recognized in several prior panel decisions -, the Panel finds that the Respondent was or could have been aware of the Complainant’s trademark at the time of the registration. Moreover, the composition of the disputed domain name, which encompasses the trademark MARLBORO and the descriptive term “smokers”, and the Respondent’s acknowledgement of the famous character of the trademark MARLBORO suggest that the Respondent indeed had the Complainant’s trademark in mind when registered the disputed domain name.

The disputed domain name has been pointed to a web page indicating that a web site would be coming soon. It is well established that also the passive holding of a domain name could amount to bad faith under certain circumstances. See Telstra Corp. v. Nuclear Marshmallows, supra.

In the case at hand, according to the evidence on records, the disputed domain name has not been offered for sale by the Respondent, nor has the Complainant proven that the Respondent engaged in a pattern of bad faith registrations, or that the Respondent registered the disputed domain name using false contact details. However, having reviewed all the correspondence sent from the Respondent to the Center after the notification of the Complaint, including the late Response submitted by the Respondent, the Panel has not found any explanation as to the Respondent’s reasons for registering the disputed domain name or its intended use. Although the burden of proving the Respondent’s bad faith is on the Complainant, the Panel finds that the Respondent’s silence on this issue within the framework of the passive holding is a circumstance evidencing the Respondent’s bad faith. Indeed, the Respondent’s vague assertions suggest that the Respondent did not register the disputed domain name for a bona fide, legitimate use. Moreover, in light of the well-known character of the Complainant’s trademark MARLBORO, the Panel finds that any active use of the disputed domain name made by the Respondent would likely cause confusion with the trademark MARLBORO as to the source, sponsorship, affiliation or endorsement of the site, as Internet users visiting the site may be doing so expecting to reach a site managed by, or authorized by, the Complainant.

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under 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 <marlborosmokers.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: April 12, 2016