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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Muhammad Abdi

Case No. D2016-1288

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 Muhammad Abdi of Rantau, Indonesia.

2. The Domain Name and Registrar

The disputed domain name, <marlborotz.com>, is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 July 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2016.

The Center appointed Leticia Caminero as the sole panelist in this matter on August 9, 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.

The language of the Registration Agreement in respect of the disputed domain name is English and the Complaint was filed in English.

4. Factual Background

The Complainant produces and trades cigarettes in the United States, including cigarettes under the MARLBORO trademarks. MARLBORO cigarettes have been made and sold by the Complainant (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.

From April 14, 1908, MARLBORO has been registered as a trademark on behalf of the Complainant, along with the Red Roof design since July 25, 1972, before the Principal Register of the U.S. Patent and

Trademark Office (“USPTO”).

Earlier UDRP panels have acknowledged that the MARLBORO trademarks are worldwide well-known. (e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; 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.

As of March 6, 2000, the Complainant registered the domain name <marlboro.com>, which corresponds to its website “www.marlboro.com”.

The Respondent registered the disputed domain name, <marlborotz.com>, on January 30, 2016. The disputed domain name is not being used, since it corresponds to an inactive site.

5. Parties’ Contentions

A. Complainant

First, the Complainant states that the disputed domain name, <marlborotz.com>, is identical or confusingly similar to a trademark in which the Complainant has rights. Given the Complainant’s well-established rights in its name and mark, the addition of two random letters “tz” to “marlboro” does not distinguish the disputed domain name from the MARLBORO trademarks. Additionally, a Top-Level Domain name is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

Moreover, the Complainant declares that numerous UDRP panels have held confusing similarity over a domain name and a trademark, when the domain name incorporates the mark in its entirety (quoting Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, supra, ordering transfer of domain name <marlboroblackmenthol.com>; and Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675, ordering transfer of domain name <marlboroblack.com>).

Second, the Complainant affirms that the Respondent has no rights or legitimate interests in the disputed domain name, <marlborotz.com>. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word “marlboro”. On information and belief, the Respondent has never sought or obtained any trademark registrations for “marlboro” or any variation thereof. 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, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. In addition, the WhoIs record associated with the disputed domain name does not identify the Respondent by that disputed domain name.

Furthermore, the Complainant states that before any notice to the Respondent of this dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, as the disputed domain name points merely to an inactive website showing an error message. The Respondent chose to use this trademark to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the MARLBORO trademarks.

Third, the Complainant claims that the Respondent has registered and is using the disputed domain name, <marlborotz.com>, in bad faith. The disputed domain name was registered with full knowledge of the Complainant’s rights in the MARLBORO trademarks, which greatly predate the Respondent’s registration of the disputed domain name. The MARLBORO mark has been in use since 1883 and was registered in the United States in 1908, whereas the disputed domain name was registered more than a century later, on January 30, 2016.

The Complainant asserts that it is well-settled that the Respondent’s very method of infringement — using the exact MARLBORO trademarks to divert Internet users from the Complainant’s true website — demonstrates bad faith use under the Policy. The registration and use of the disputed domain name, <marlborotz.com>, 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

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

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

(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.

The Complainant bears the burden of proof on each of these elements. Since the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainant must still support its allegations with evidence to succeed in a UDRP proceeding.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name , <marlborotz.com>, is confusingly similar to the MARLBORO trademarks to which the Complainant has rights. Provided that the addition of the two letters “tz” to “marlboro” as well as the generic Top-Level Domain (“gTLD”) “.com” do not account as sufficient elements to distinguish the disputed domain name from the MARLBORO trademarks.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name, <marlborotz.com>, leads to an inactive website showing an error message. The Respondent is not commonly known by the disputed domain name. Consequently, there is no evidence that the Respondent, prior to this dispute, used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Likewise, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel concludes that the Respondent chose the disputed domain name, <marlborotz.com>, with previous knowledge of the Complainant’s world-famous MARLBORO trademarks. The disputed domain name leads to an inactive website which, in the circumstances of this case, does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Therefore, the Respondent registered and uses the disputed domain name in bad faith.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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, <marlborotz.com>, be transferred to the Complainant.

Leticia Caminero
Sole Panelist
Date: August 23, 2016

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