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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Whois Protect Service / Rakshita Mercantile Private Limited

Case No. D2017-0030

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by Arnold & Porter Kaye Scholer LLP, United States.

The Respondent is Domain Whois Protect Service of Mumbai, Maharashtra, India / Rakshita Mercantile Private Limited of Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <marlborro.com> ("the Domain Name") is registered with Tirupati Domains and Hosting Pvt Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name (which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2017.

The Center verified that the Complaint together with the amended Complaint 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 January 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2017.

The Center appointed Dawn Osborne as the sole panelist in this matter on February 23, 2017. 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 manufactures and sells cigarettes under its famous MARLBORO trademark which has been used since 1883 and is registered, inter alia, in the USA since 1908. It has the domain name <marlboro.com>.

The Domain Name registered in 2007 has been used as a directory page where it is possible to "Search Ads".

5. Parties' Contentions

A. Complainant

The Complainant's contentions can be summarised as follows:

The Complainant manufactures and sells cigarettes under its famous MARLBORO trademark which has been used since 1883 and is registered, inter alia, in the USA since 1908. It has the domain name <marlboro.com>.

The Domain Name is confusingly similar to the Complainant's MARLBORO mark. It contains an obvious and deliberate misspelling of that mark with an extra "r". The addition of the generic Top Level Domain ("gTLD) ".com" is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection with the Complainant or any of its products and has no consent to use the Complainant's marks. Respondent has never been known by any such name. There is no evidence the Respondent has used the Domain Name in connection with a bona fide offering of goods and services or any non commercial or fair use of the Domain Name as it points to a site leading to a partially built directory page with a "Search Ads" bar, which diverts users from the Complainant's website which is bad faith use under the Policy.

The Respondent has intentionally attempted to attract Internet users to his website for commercial gain by using the Domain Name for a directory site leading to pay-per-click links. The Respondent also used a privacy service to mask its identity.

B. Respondent

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

6. Discussion and Findings

Identical and/or Confusingly Similar

The Domain Name consists of a sign highly similar to the Complainant's MARLBORO mark (with an extra "r" added) and the gTLD ".com". Accordingly the Domain Name appears to be a typosquatted version of the Complainant's registered mark. Panels have commonly held that the addition of one letter to a mark does not distinguish a domain name from a complainant's mark. See Amazon.com, Inc. v Ikhizamah, WIPO Case No. D2002-1168 (holding that the <zamazon.com> domain name was confusingly similar to the complainant's AMAZON.COM mark)

The gTLD ".com" does not serve to distinguish the Domain Name from the Complainant's MARLBORO mark.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.

As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Respondent does not appear to be commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The site attached to the Domain Name appears to be set up for commercial benefit using the Complainant's intellectual property rights to make a profit by pointing to a directory site intended to lead to third party links and commercial websites, using a typosquatted version of the Complainant's domain name chosen in the hope that a customer might mistakenly reach the Respondent's website by mistakenly typing an additional letter when intending to access the Complainant's site.

As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

The Panel finds that the Respondent is using or intends to use the Domain Name to make profit from linking to third party websites in a confusing manner. The use is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant offering goods and services under a Domain Name which is a typosquatted version of the Complainant's famous MARLBORO mark. The Respondent has not answered the Complaint and has not denied that it is aware of the Complainant's rights or that this was its intention. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's web site pursuant to the Policy paragraph 4(b)(iv).

Finally, typosquatting itself is evidence of relevant bad faith registration and use pursuant to the Policy paragraph 4(a)(iii).

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name, <marlborro.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: March 6, 2017

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