Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("USA" or "United States"), represented by Arnold & Porter Kaye Scholer LLP, USA.
Respondent is Shara Gatrelle, The California Cannabis Connect of North Hills, California, USA.
The disputed domain names <marlborocbdextracts.com>, <marlborothcextracts.com>, <philipmorriscannabiscigarettes.com> and <philipmorrismarijuanacigarettes.com> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 4, 2017.
The Center appointed Seth M. Reiss as the sole panelist in this matter on April 12, 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.
Complainant manufactures, markets, and sells cigarettes in the United States and elsewhere, including cigarettes under the MARLBORO trademark. Complainant has sold its MARLBORO branded cigarettes since 1883 and owns United States Patent and Trademark Office trademark registrations for its Marlboro brand that date from April 14, 1908 (registration number 68,502). In 2000, Complainant registered the domain name <marlboro.com> which it uses to point to the website "www.marlboro.com" that promotes Marlboro branded products. Complainant claims its MARLBORO mark has become distinctive and uniquely associated with Complainant and Complainant's cigarette products.
Complainant has used the name, trade name and mark PHILIP MORRIS in conjunction with its marketing and sale of cigarette products, including under the Marlboro brand, continuously throughout the United States for more than a century. Beginning in 1995, Complainant registered domain names that incorporate the Philip Morris trade name and mark including the domain name <philipmorris.com>, which it uses to point to a website containing promotional information about Complainant. Complainant asserts that the Philip Morris name is widely recognized as referring to Complainant and its tobacco products.
The WhoIs records show that those disputed domain names incorporating the MARLBORO mark were registered October 29, 2016, and those incorporating the PHILIP MORRIS mark were registered on November 14, 2016. Each of the disputed domain names currently resolves to an under construction website that exhibits the content "Website coming soon! Please check back soon to see if the site is available", except for the disputed domain name <philipmorriscannabiscigarettes.com>, which resolves to an inactive website.
Complainant contends that the disputed domain names <marlborocbdextracts.com>, <marlborothcextracts.com> are identical or confusingly similar to Complainant's MARLBORO mark and that the disputed domain names <philipmorriscannabiscigarettes.com> and <philipmorrismarijuanacigarettes.com> are identical or confusingly similar to Complainant's PHILIP MORRIS mark; that Respondent has no rights or legitimate interests in respect of any of the disputed domain names; and that Respondent registered and is using each of the disputed domain names in bad faith. Complainant requests that the four disputed domain names be transferred to it.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted 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 complainant must prove each of the following:
(i) the 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 domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
"If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1.
Complainant's ownership of the MALRBORO mark is clearly demonstrated by United States federal registrations, as well as evidence of long term, continuous and widespread use predating by more than 100 years Respondent's registration of the disputed domain names incorporating the MARLBORO mark. Similarly, Complainant's ownership of the PHILIP MORRIS mark is clearly demonstrated by evidence of long term, continuous and widely recognized use, also predating by more than 100 years Respondent's registration of those disputed domain names that incorporate the PHILIP MORRIS mark. See, e.g., Sintef v. Sintef.com, WIPO Case No. D2001-0507 ("SINTEF ha[d] been used to identify the Complainant's research services for more than 50 years" giving rise to common law trademark rights).
The addition of the descriptive terms "thcextracts", "cbdextracts", cannabiscigarettes", and "marijuanacigarettes",1 or the generic Top-Level Domain ("gTLD") suffix ".com", fails to distinguish the disputed domain name from Complainant's MALRBORO mark on the one hand, or Complainant's PHILIP MORRIS mark on the other, and fails to avoid a finding of confusing similarity. WIPO Overview 2.0, paragraph 1.9. See, e.g.,Philip Morris USA Inc. v. Andrew Soto, WIPO Case No. D2016-0247 ("The Panel agrees with Complainant that adding the descriptive terms "weedman" and "kush" to Complainant's trademarks will increase, not decrease, the likelihood of confusion…," ordering the transfer of domain names <marlborokush.com> and <marlboroweedman.com> to the complainant).
That the terms "thcextracts", "cbdextracts", cannabiscigarettes", and "marijuanacigarettes" may be perceived negatively to suggesting that Complainant markets or intends to market marijuana cigarettes under the MALRBORO or PHILIP MORRIS marks, does not negate a finding of confusing similarity. A "domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements)." WIPO Overview 2.0, paragraph 1.3.
The Panel finds that the disputed domain names <marlborocbdextracts.com> and <marlborothcextracts.com> are confusingly similar to the MALBORO mark in which Complainant has rights, and that the disputed domain names <philipmorriscannabiscigarettes.com> and <philipmorrismarijuanacigarettes.com> are confusingly similar to the PHILIP MORRIS mark in which Complainant has rights, and that the first element of paragraph 4(a) of the Policy has been established as to each of the four disputed domain names.
The consensus view of UDRP panels concerning the burden of establishing a lack of rights or legitimate interests in respect of a disputed domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
In the present case, Complainant has alleged that Respondent has no rights or legitimate interests in any of the disputed domain names. The Panel finds that Complainant has established a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the disputed domain names. Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074. By not submitting a response, Respondent has failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some rights or legitimate interests in one or more of the disputed domain names. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
Moreover, the case record is devoid of evidence demonstrating some rights or legitimate interests in Respondent in respect of the disputed domain names.
That some of the disputed domain names have sometime resolved to a landing page announcing "Website coming soon! Please check back soon to see if the site is available", does not, by itself, provide evidence of some rights or legitimate interests on the part of Respondent to the disputed domain names used to point to an under construction website.
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC [pay per click] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' [see also paragraph 3.8 below] or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder." WIPO Overview 2.0, paragraph 2.6
The Panel finds that Respondent has failed to establish that it has some rights or legitimate interests in respect of the disputed domain names and that that the second element of paragraph 4(a) of the Policy has been established as to each of the four disputed domain names.
This Panel agrees with previous UDRP panels that have concluded that the MARLBORO mark as well as the PHILIP MORRIS mark are each properly characterized as famous marks. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 ("As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide").
Evidence that Respondent registered and is using the disputed domain names in bad faith arises from the fame of the MARLBORO and PHILIP MORRIS marks, that Respondent registered four such domain names within a short period of time, and that Respondent's use of the disputed domain names has been limited to "coming-soon" landing pages.
Respondent could not reasonably claim to have been unaware of the rights Complainant holds in the MARLBORO and PHILIP MORRIS marks at the time Respondent registered and began using, or determined to postpone its use of, the disputed domain names.
This same conclusion has been reached by UDRP panels deciding cases involving domain names that incorporate the famous MARLBORO mark or PHILIP MORRIS mark in its entirety. See, e.g., Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (it is "inconceivable" that the respondent "was not aware of the MARLBORO trademarks").
Additionally, Respondent's registration of four disputed domain names that incorporate Complainant's famous marks within a short period of time is evidence of bad faith registration and use. "A pattern of conduct [preventing a trademark holder from reflecting the mark in a corresponding domain name] can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks." Paragraph 4(b)(ii) of the Policy; WIPO Overview 2.0, paragraph 3.3. TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc., WIPO Case No. D2012-2533.
Respondent's use of some of the disputed domain names to point to an "under construction" website and Respondent's failure to use the disputed domain name <philipmorriscannabiscigarettes.com>, sometimes referred to as "passive use", is consistent, in the circumstances, with a finding of bad faith registration and use.
"With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere 'parking' by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)." WIPO Overview 2.0, paragraph 3.2.
Here the circumstances include Respondent's incorporation in its entirely of clearly famous marks into disputed domain names, Respondent having engaged in filing multiple such registrations during a short period of time, and Respondent's failure to make any response to the Complaint. These circumstances considered together are sufficient to reach a finding that Responded registered and is using the disputed domain names in bad faith establishing the third and final element of paragraph 4(a) of the Policy in respect to each of the disputed domain names.
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 <marlborocbdextracts.com>, <marlborothcextracts.com>, <philipmorriscannabiscigarettes.com> and <philipmorrismarijuanacigarettes.com> be transferred to Complainant.
Seth M. Reiss
Sole Panelist
Date: April 16, 2017
1 The abbreviation "thc" is commonly understood as referring to tetrahydrocannabidinol, while the abbreviation "cbd" is commonly understood as referring to cannabidiol, both chemical constituents of the psychoactive drug marijuana, also known as cannabis.