WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Krunal Verma and MAC
Case No. D2016-0250
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States" or "US"), represented by Arnold & Porter, United States of America.
Respondents are Krunal Verma and MAC of Anand, Gujarat, Republic of India.
2. The Domain Names and Registrars
The disputed domain names <marlboro-cigs.club>, <marlborocigs.club>, <marlboro-cigs.info>, <marlboro-cigs.site>, <marlboro-cigs.space>, <marlborocigs.space>, <marlboro-cigs.xyz>, <marlborocigs.xyz>, <marlboroprize.biz>, <marlboroscigs.club>, <marlboroscigs.info>, <marlboroscigs.space> and <marlboroscigs.xyz> are registered with NameCheap, Inc. The disputed domain names <marlboroprimes.com>, <marlboroprize.com>, <marlboropromo.com>, <marlboroscigs.com> and <marlborosprize.com> are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2016. On February 10, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 10, 2016 and February 11, 2016, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on February 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 26, 2016.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on March 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 29, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 6, 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
Complainant manufactures, markets and sells cigarettes including in the United States under, inter alia, its MARLBORO trademarks.
Complainant owns, inter alia, the following US trademark registrations made on the Principal Register of the United States Patent and Trademark Office ("USPTO"):
MARLBORO, Registration No. 68,502, Registration date April 14, 1908, filed on October 17, 1907, covering cigarettes in International Class 34. First use / First use in commerce: 1883, and
MARLBORO and design, Registration No. 938,510, Registration date July 25, 1972, filed on March 30, 1971, covering cigarettes in International Class 34. First use / First use in commerce: 1954.
Complainant also owns the domain name <marlboro.com> which points to Complainant's website, "www.marlboro.com".
According to the WhoIs data provided by the registrars, the dates of creation of the records corresponding to the disputed domain names are as follows:
<marlborocigs.club>, <marlborocigs.space> and <marlborocigs.xyz>: October 24, 2015.
<marlboroscigs.com>, <marlboroscigs.club>, <marlboro-cigs.xyz>, <marlboroscigs.space>, <marlboroscigs.xyz>, <marlboroscigs.info>, <marlboro-cigs.info>, <marlboro-cigs.site>, <marlboro-cigs.club>, and <marlboro-cigs.space>: October 25, 2015.
<marlboropromo.com>: November 5, 2015.
<marlboroprimes.com>, <marlboroprize.biz>, and <marlboroprize.com>: November 6, 2015.
<marlborosprize.com>: November 8, 2015.
5. Parties' Contentions
A. Complainant
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to the MARLBORO trademarks in which Complainant has rights. These marks are registered on the Principal Register of the USPTO, and are valid, subsisting, and incontestable pursuant to US law.
Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States, and has thus developed substantial goodwill in the MARLBORO
trademarks. Through such widespread, extensive efforts, the marks have become distinctive and are uniquely associated with Complainant and its products. Numerous UDRP administrative panels already have determined that the MARLBORO trademarks are famous.
Complainant uses these trademarks in connection with several variations of MARLBORO brand cigarettes.
Respondents have no rights or legitimate interests in the disputed domain names. Respondents have no connection or affiliation with Complainant, its affiliates, or any of the many products provided by Complainant under the MARLBORO marks. Respondents were never known by any name or trade name that incorporates the word "Marlboro." On information and belief, Respondents have never sought or obtained any trademark registrations for "Marlboro" or any variation thereof. Respondents have not received any license, authorization, or consent — express or implied — to use the MARLBORO marks in a domain name or in any other manner, either at the time when Respondents registered and began using the disputed domain names, or at any other time since. In addition, the WhoIs records associated with the disputed domain names do not identify Respondents by any of the disputed domain names.
Complainant also notes that, before any notice to Respondents of this dispute, there is no evidence of Respondents' use of, or demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods and services.
Respondents chose to use the MARLBORO trademark to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO marks. As one panel found in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, 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 thus illegitimate users such as Respondents could have no legitimate interest in the trademark.
When a respondent, such as Respondents here, fails to make any use of the disputed domain name, merely pointing that domain name to an inactive website, such a respondent has no rights or legitimate interests in the domain name.
Respondents have registered the disputed domain names in bad faith, with full knowledge of Complainant's rights in the MARLBORO trademarks. This is readily apparent from the relative timing of the use and registration of the MARLBORO mark versus Respondents' registration of the disputed domain names. The MARLBORO mark has been in use since 1883 and was registered in the United States in 1908, whereas the disputed domain names were registered more than a century later, in October and November 2015.
The MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the USPTO records that are readily accessible online. Respondents are deemed to have constructive notice of Complainant's trademark rights by virtue of Complainant's federal registrations for the MARLBORO trademarks.
The fact that the actual registrants of the disputed domain names used a masking service to mask their identities is also a strong indication of both bad faith registration and use under the Policy.
Also, the sheer number of the disputed domain names at issue manifests Respondents' bad faith. See, e.g., TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc., WIPO Case No. D2012-2533 (stating "[t]he consensus view states that a pattern of [bad faith] conduct can involve [...] a single case involving the registration of multiple domain names similar to a trademark", and ordering transfer of five infringing domain names).
Respondents are using the disputed domain names in bad faith. It is well-settled that Respondents' very method of infringement — using the exact MARLBORO trademarks to divert Internet users from Complainant's true website — demonstrates bad faith use under the Policy. See, e.g., Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith) (Citations omitted).
Additionally, as noted supra, Respondents' use of the WhoisGuard masking service to mask their identities is also a strong indication of bad faith use under the Policy.
Indeed, the inactive nature of the websites at the disputed domain names also supports the conclusion that Respondents are acting in bad faith. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") supports the view that passive holding of a domain name pointing to an inactive site might well be a sign of bad faith, particularly in circumstances where, as here, Complainant has a well-known mark that Respondents have misappropriated and Respondents have masked their identities.
In addition, the registration and use of the disputed domain names creates a form of initial interest confusion, which attracts Internet users to the disputed domain names based on the use of the MARLBORO marks. This is further evidence that the disputed domain names are being use in bad faith.
B. Respondents
Respondents did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identity of Respondents
The Panel notes that in Complainant's initial Complaint, filed on February 9, 2016, 22 domain names incorporating the MARLBORO trademark were included. Complainant explains that it named Whois Guard Protected and Whoisguard, Inc. as Respondents because potential underlying registrants were masked by WhoisGuard Protected/Whois Guard, Inc.
On February 22, 2016, the Center informed the Parties that, following the replies of the corresponding registrars to verification requests from the Center, the following 15 of the original disputed domain names were registered by Respondents Krunal Verma and MAC: <marlboroprize.biz>, <marlboroscigs.xyz>, <marlboroscigs.space>, <marlboroscigs.info>, <marlborocigs.xyz>, <marlborocigs.space>, <marlborocigs.club>, <marlboro-cigs.space>, <marlboro-cigs.info>, <marlboro-cigs.club>, <marlboroprimes.com>, <marlboropromo.com>, <marlboroscigs.com>, <marlborosprize.com> and <marlboro-cigs.site>.
In its amended Complaint, Complainant also states that Krunal Verma and MAC were also the registrants of <marlboroscigs.club>, <marlboroprize.com> and <marlboro-cigs.xyz>, and requested the addition of these three domain names to the present proceeding.
The Panel also notes that the WhoIs records show that Krunal Verma and Mac are the registrants of the disputed domain names <marlboro-cigs.club>, <marlborocigs.club>, <marlboro-cigs.info>, <marlboro-cigs.site>, <marlboro-cigs.space>, <marlborocigs.space>, <marlborocigs.xyz>, <marlboroprimes.com>, <marlboroprize.biz>, <marlboropromo.com>, <marlboroscigs.com>, <marlboroscigs.info>, <marlboroscigs.space>, <marlboroscigs.xyz>, and <marlborosprize.com>. In addition, manual lookups of WhoIs data conducted by the Panel on April 15, 2016 showed that the <marlboroscigs.club>, <marlboroprize.com> and <marlboro-cigs.xyz> disputed domain names have also Krunal Verma as registrant and Mac as registrant organization.
For the above reasons the Panel finds that the Respondents are Krunal Verma and Mac, as named by Complainant in the amended Complaint.
B. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the MARLBORO marks. See section 4 above.
The Panel notes that in the disputed domain names <marlboro-cigs.club>, <marlborocigs.club>, <marlboro-cigs.info>, <marlboro-cigs.site>,<marlboro-cigs.space>, <marlborocigs.space>, <marlboro-cigs.xyz>, <marlborocigs.xyz>, <marlboroscigs.club>, <marlboroscigs.info>, <marlboroscigs.space>, <marlboroscigs.xyz> and <marlboroscigs.com>, the term "cigs" is added to the MARLBORO mark, while in the disputed domain names <marlboroprize.biz>, <marlboroprize.com>, and <marlborosprize.com> the term "prize" is added to the mark. Also, in the disputed domain name <marlboroprimes.com>, the added term is "primes", while in the disputed domain name <marlboropromo.com>, the added term is "promo".
In the Panel's view these added terms, including "cigs" as short for "cigarettes", and "promo" as short for "promotion", are generic. Since the "Marlboro" element is the principal or dominant element in the disputed domain names, those additions are inapt to distinguish any of the disputed domain names from the MARLBORO mark. See WIPO Overview 2.0, paragraph 1.9 ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.")
In particular, the addition of the letter "s" to the mark in several of the disputed domain names as in a plural or possessive form, or as an intended misspelling, does nothing to dispel the impression of association of the disputed domain names with the mark. See Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018 ("The one-letter difference of each of Respondent's domain names render them nonsensical, suggesting that Respondent chose them specifically because they are confusingly similar to Complainant's well-known mark. Accordingly, the Panel finds that the <ataples.com>, <sstaples.com>, <staaples.com>, <staoles.com> domain names are confusingly similar to Complainant's STAPLES mark under Policy ¶ 4(a)(i).")
The Panel concludes that the disputed domain names are confusingly similar to Complainant's mark.
C. Rights or Legitimate Interests
Complainant contends that Respondents have no rights or legitimate interests in the disputed domain names. Respondents have no connection or affiliation with Complainant or with the products covered by the MARLBORO marks. Complainant also says that Respondents were never known by any name that incorporates the word "Marlboro" and that the WhoIs records associated with the disputed domain names do not identify Respondents by any of the disputed domain names. Complainant further says that on information and belief, Respondents have never sought or obtained any trademark registrations for "Marlboro" or any variation thereof. Complainant also states that Respondents have not received any license, authorization, or consent to use the MARLBORO marks in any manner.
Complainant further notes that, before any notice to Respondents of this dispute, there is no evidence of Respondents' use of, or demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods and services. In fact Respondents fail to make any use of the disputed domain names, merely pointing that domain names to inactive websites, demonstrating that Respondents have no rights or legitimate interests in the disputed domain names. Respondents chose to use the MARLBORO trademark to divert Internet users from Complainant's website by capitalizing on the public recognition of the MARLBORO marks. When respondents, such as Respondents here, fail to make any use of a disputed domain name, merely pointing that domain name to an inactive website, such a respondent has no rights or legitimate interests in the domain name.
In the Panel's view, these contentions are supported by the available evidence, and thus are apt to constitute a prima facie case that Respondents lack rights or legitimate interests in the disputed domain names.
The Panel notes that there is no evidence that the disputed domain names have ever been used in connection with websites or in any other manner. On April 12, 2016 the Panel under its general powers pursuant to Rules paragraph 10(a) conducted lookups for the websites at the disputed domain names. This search showed that 13 of the disputed domain names were inactive on the ground of "Server not found" 1, while the remaining 5 disputed domain names had been suspended because of pending ICANN verification.2 As to past use, a Panel's search on the Wayback Machine at "www.archive.org" made on April 14, 2016 revealed no archived pages of any of the websites at the disputed domain names.
In the Panel's opinion, the lack of any past or present use by a respondent excludes the application of Policy paragraph 4(c)(i) (use or preparation to use the domain name in connection with a bona fide offering of goods or services), and of Policy paragraph 4(c)(iii) (fair use or noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue).
Also, the WhoIs data revealed by the Registrars of the disputed domain names in their replies to the Center's verification requests do not show that Respondents are known by any of the disputed domain names, commonly or otherwise, which excludes the application of Policy paragraph 4(c)(ii).
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has at least a right or legitimate interest in the disputed domain name. See WIPO Overview 2.0, paragraph 2.1. Since Respondents failed to present any argument or evidence in their own favor, the Panel concludes that Complainant has made out its case that Respondents lack any rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
The Panel notes that Complainant's first registration for the MARLBORO mark predates the registration of the disputed domain names by over a century. See section 4 above.
Also, as mentioned by Complainant, previous UDRP panels have held the MARLBORO mark to be "famous world-wide" (Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306), "well-known worldwide" (Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660), "well-known" (Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735, or enjoying "worldwide renown" (Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263). The Panel shares these views.
These circumstances, together with the fact that Respondents registered 18 disputed domain names incorporating Complainant's MARLBORO mark, and that several of them contain the term "cigs" meaning "cigarettes", clearly indicate that Respondents were fully aware of, and that it targeted Complainant's mark and products at the time of registering the disputed domain names. In the circumstances of this case this means that the registration of the disputed domain names was in bad faith.
As to the total lack of use of the disputed domain names by Respondents, the Panel finds the circumstances of this case to be closely similar to the facts in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Telstra panel established that certain circumstances of inaction (passive holding) other than those identified in Policy paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith. In the opinion of the Panel, the following circumstances of the present case lead to a similar conclusion:
a) Complainant's MARLBORO mark is famous or well-renowned in respect of cigarettes;
b) Respondents have provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names, or any other argument in their own favor, and
c) It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondents that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant's rights under trademark law.
The Panel concludes that the disputed domain names were registered and are being used 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 names, <marlboro-cigs.club>, <marlborocigs.club>, <marlboro-cigs.info>, <marlboro-cigs.site>, <marlboro-cigs.space>, <marlborocigs.space>, <marlboro-cigs.xyz>, <marlborocigs.xyz>, <marlboroprize.biz>, <marlboroscigs.club>, <marlboroscigs.info>, <marlboroscigs.space>, <marlboroscigs.xyz>, <marlboroprimes.com>, <marlboroprize.com>, <marlboropromo.com>, <marlboroscigs.com>, and <marlborosprize.com>, be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: April 20, 2016
1 <marlboro-cigs.club>, <marlborocigs.club>, <marlboro-cigs.info>, <marlboro-cigs.site>, <marlboro-cigs.space>, <marlborocigs.space>, <marlboro-cigs.xyz>, <marlborocigs.xyz>, <marlboroprize.biz>, <marlboroscigs.club>, <marlboroscigs.info>, <marlboroscigs.space> and <marlboroscigs.xyz>.
2 <marlboroprimes.com>, <marlboroprize.com>, <marlboropromo.com>, <marlboroscigs.com> and <marlborosprize.com>