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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Adil Ismail

Case No. D2017-1450

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Stockholm, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Adil Ismail of Atlanta, Georgia, United States.

2. The Domain Name and Registrar

The disputed domain name <getmarlboro.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 28, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 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 July 31, 2017.

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 Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2017.

On September 8, 2017, the Center received an email from the Respondent. On September 11, 2017, the Center forwarded such communication to the Complainant and the Complainant subsequently filed a suspension request with the Center. The proceeding was accordingly suspended by the Center to enable the Parties to discuss settlement. The Center received an email from the Respondent on October 4, 2017. On October 9, 2017, the Complainant requested the Center to reinstitute the proceeding due to the Respondent's inaction to the settlement process. On October 13, 2017, the Center reinstituted the proceeding.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 19, 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

Complainant states, and provides evidence to support, that is the owner of "numerous" trademark registrations in the United States that include the mark MARLBORO, including the following:

- United States Trademark Reg. No. 68,502 for MARLBORO (registered April 14, 1908) for use in connection with "cigarettes."

- United States Trademark Reg. No. 3,365,560 for MARLBORO (registered January 8, 2008) for use in connection with "Tobacco Products, namely, Snus."

- United States Trademark Reg. No. 3,419,647 for MARLBORO (registered April 29, 2008) for use in connection with "Tobacco Products, Namely, Smokeless Tobacco."

These trademarks are referred to respectively herein as the "MARLBORO Trademark."

The Disputed Domain Name was registered on May 17, 2017, and is not being used in connection with an active website.

5. Parties' Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the MARLBORO Trademark because, inter alia, "[p]ast Panels have consistently held that a disputed domain name that consists merely of a complainant's trademark and an additional term that closely relates to and describes that complainant's business is confusingly similar to that complainant's trademarks"; and "[b]y appending the term 'get' in front of Complainant's MARLBORO® trademark, Respondent has created a domain name which would lead unsuspecting Internet users to believe the domain is associated with a website where they would be able to purchase, acquire, or otherwise 'get' products related to the MARLBORO® brand."

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Name"; "Respondent has failed to make use of this Disputed Domain Name's website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name"; and "Respondent registered the Disputed Domain Name on May 17, 2017, which is significantly after Complainant filed for registration of its MARLBORO® trademark with the USPTO, and also significantly after Complainant's first use in commerce of its trademark in 1883."

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "[a]t the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se"; "passively holding a domain name can constitute a factor in finding bad faith registration and use"; "[t]he Disputed Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Name"; and "the Respondent currently holds registrations for other domain names that misappropriate the trademarks of well-known brands and businesses," including <getthewii.com> and <getthewiiu.com> (which contain the trademarks WII and WII U, owned by Nintendo of North America Inc.).

B. Respondent

The Respondent did not reply to the Complainant's contentions. However, in an email to the Center that promoted the suspension in anticipation of a settlement, Respondent stated, "I don't understand why [the Registrar] would sell [the Disputed Domain Name] if it was breaking any laws." Later, Respondent stated:

"Due to lack of common courtesy to atleast [sic] reimburse me for something you think you own when really it's just some words that at this time make up nothing in the real & digital world. Nothing has been created nor developed nor registered as any sort of business. I would much rather keep the domain and do nothing with it. No trademark laws violated.

Several international domain collectors expressed interest in it back in May during my travels to the East. They were offering a significant amount more than your settlement form which I'm curious as to why, when you're going to be sending them the same notice as I received. I will get back to you after I've done my research and spoken to these domain enthusiasts.

On a side note:

As a Marlboro smoker for the last 10 Years, I am disappointed by your 'shoo shoo' attitude toward me in this matter."

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MARLBORO Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the MARLBORO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "getmarlboro") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.

Here, the Disputed Domain Name contains the MARLBORO Trademark in its entirety plus the word "get." As stated in WIPO Overview 3.0, section 1.7, "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Name"; "Respondent has failed to make use of this Disputed Domain Name's website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name"; and "Respondent registered the Disputed Domain Name on May 17, 2017, which is significantly after Complainant filed for registration of its MARLBORO® trademark with the USPTO, and also significantly after Complainant's first use in commerce of its trademark in 1883."

WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).

Although Complainant does not allege which, if any, of the above factors establishes bad faith here, "the scenarios enumerated in UDRP paragraph 4(b) are non-exhaustive." WIPO Overview 3.0, section 3.1.3. Complainant has alleged that bad faith exists under the "passive holding" doctrine, which panels routinely have found can establish bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

"While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." WIPO Overview 3.0, section 3.3. Here, given the more than century-old registration of the MARLBORO Trademark, Respondent's failure to submit a substantive response or to provide any evidence of actual or contemplated good-faith use, and Respondent's use of a privacy service, application of the passive holding doctrine is appropriate, as previous panels have concluded under similar circumstances also involving the MARLBORO Trademark. See, e.g., Philip Morris USA Inc. v. Krunal Verma and MAC, WIPO Case No. D2016-0250; and Philip Morris USA Inc. v. Jack Sparrow, WIPO Case No. D2016-2220.

Accordingly, the Panel finds that Complainant has proven the third element 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 disputed domain name <getmarlboro.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: November 1, 2017

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