The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA”), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Bill Greer of Carson, Virginia, USA.
The disputed domain name <marlborojuana.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 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 Complainant 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 January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2017.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 10, 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.
The Complainant is the company Philip Morris USA Inc., a corporation organized and existing under the laws of the Commonwealth of Virginia, with its principal place of business in Richmond, Virginia, USA.
The Complainant owns multiple trademarks, including MARLBORO Registration No. 68,502, registered on April 14, 1908, with the Unites States Patent and Trademark Office; as well as MARLBORO and Red Roof Design Registration No. 938,510, registered on July 25, 1972 (the “Trademarks”). The Complainant uses its Trademarks in connection with cigarettes and tobacco products.
The Respondent is Bill Greer, who is located in Carson, Virginia, USA.
The disputed domain name was registered on October 25, 2009, and resolves to a page with the message “website coming soon! Please check back soon to see if the site is available.”
The Complainant contends that the disputed domain name is confusingly similar to its Trademarks in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complaint has not authorized the Respondent to use its Trademarks. The Complainant notes that the disputed domain name resolves to an inactive website.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that due to the popularity of the Trademarks, the Respondent knew or should have known that it was infringing on the Complainant’s rights when it registered the disputed domain name. The Complainant further notes that the disputed domain name does not resolve to an active website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds trademark registrations for MARLBORO which are closely associated with its business activities.
The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic Top-Level Domain (“gTLD”) “.com”. It is well established that the addition of the gTLD “.com” is typically without legal significance when comparing the disputed domain name to the Complainant’s trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Further, the disputed domain name incorporates the Complainant’s existing Trademarks, with the single addition of “juana”, which may be read as a nickname for “marijuana”. The disputed domain name incorporates the dominant feature of the Complainant’s mark and is, in the Panel’s view, confusingly similar to the Complainant’s mark. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant’s Trademarks, and the first element has been established.
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of production, several past UDRP decisions have held that once a complainant establishes a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this factor shifts to the respondent to rebut the showing (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not commonly known by the disputed domain name, nor is it using the disputed domain name in connection with a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b) of the Policy. In the present case, the Complainant’s Trademarks are widely known both in the USA and internationally, and the disputed domain name incorporates Complainant’s Trademarks entirely.
Indeed, previous UDRP cases involving the MARLBORO Trademarks support this inference of bad faith. See, e.g., Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264 (“Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s MARLBORO Trademarks significantly pre-date Respondents’ registration of the Domain Name and in light of the long-established and widespread use and the protection of the MARLBORO Trademarks that Respondents knew or ought to have known of Complainant’s prior rights.”); Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (finding that it was “inconceivable” that the respondent “was not aware of the MARLBORO® trademarks”).
The Panel notes that the circumstances set out in paragraph 4(b) of the Policy are nonexclusive. As has been recognized by many previous UDRP panels, passive holding of a domain name may also lead to a finding of bad faith use of a domain name. The registration of the disputed domain name incorporating the Complainant’s well-known Trademark, together with the fact that the Respondent has neither made any active use of the disputed domain name, nor offered any response to the Complainant’s contentions, leads the Panel to conclude that the Respondent’s passive holding of the disputed domain name amounts to bad faith use for the purposes of the Policy.
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third and final element of the Policy has been established.
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 <marlborojuana.com> be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Date: March 17, 2017