The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Mehjabeen Neesa of Basildon, United Kingdom.
The disputed domain name <bensonandhedges-liquids.com> ("Disputed Domain Name") is registered with 1&1 Internet SE (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 10, 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 November 14, 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 amended Complaint on November 14, 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 November 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on December 14, 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 or its predecessors have used the BENSON & HEDGES trademark in the United States since the 19th century and Complainant is the owner of a number of trademark registrations with the United States Patent and Trademark Office ("USPTO"):
|
Trademark |
Office |
Reg. No. |
Goods and Services |
|
BENSON & HEDGES |
USPTO |
428,435 |
Cigars, Cigarettes, and Smoking Tobacco |
|
BH BENSON HEDGES HALLMARK OF QUALITY |
USPTO |
520,355 |
Cigars, Cigarettes, and Smoking Tobacco |
|
BENSON & HEDGES |
USPTO |
738,424 |
Cigarettes |
|
BENSON & HEDGES 100' |
USPTO |
2,538,103 |
Cigarettes |
The Respondent registered the Disputed Domain Name on June 1, 2017. The Disputed Domain Name connects to a website containing links to, inter alia, tobacco and vaping products. On the same date, the same Respondent had registered the domain name <marlboroliquids.com>, incorporating the Complainant's trademark MARLBORO. The Complainant filed a UDRP complaint against that domain name and transfer of that domain name to the Complainant was ordered in Philip Morris USA Inc. v. 1&1 Internet Limited / Mehjabeen Neesa, WIPO Case No. D2017-1451.
According to the Complainant, when comparing the Disputed Domain Name to the trademark, the relevant comparison is between the second-level portion of the Disputed Domain Name and the trademarks, being the generic Top-Level Domain ("gTLD"), in this case ".com", irrelevant when establishing whether or not a domain name is identical or confusingly similar to a trademark.
The Complainant also points out that the descriptive term "liquids" has been added to the trademark, which has no influence on the existing similarity and danger of confusion. According to the Complainant, electronic cigarettes work with concentrated liquids instead of tobacco. Therefore the inclusion of the trademark with the generic term "liquids" in the Disputed Domain Name is a clear reference to the Complainant's products which are sold under the trademark.
According to the Complainant, the Respondent is not commonly known by the Disputed Domain Name, is not sponsored by or affiliated with the Complainant in any way, and the Complainant has not given the Respondent permission to use the trademark. In addition, the Complainant claims that the Respondent is using the Disputed Domain Name to redirect Internet users to a website with links to third-party websites, some of which directly compete with the Complainant's business, namely websites featuring smoking and tobacco vaping products. Complainant assumes that the Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name's website.
The Complainant points out that by registering the Disputed Domain Name which includes the trademark in its entirety, together with the term "liquids", the Respondent shows knowledge of the Complainant's brand and business.
According to the Complainant, based these facts, the three elements of the UDRP are present.
The Respondent did not reply to the Complainant's contentions.
The Complainant has shown that it has registered rights in the BENSON & HEDGES trademark.
The Disputed Domain Name is confusingly similar to the trademark; it incorporates the mark in its entirety. The addition of the word "liquids" and the "-" do not avoid this confusing similarity, but rather confirm it, as it refers to the Complainant's products.
The gTLD ".com" may be disregarded under the confusing similarity test.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the trademarks as part of the Disputed Domain Name, is not commonly known by the Disputed Domain Name and has not acquired trademark rights in the Disputed Domain Name. The Respondent's use of the Disputed Domain Name in the present case for a website containing links to websites where products are offered for sale that compete with the Complainant's products sold under the trademark, does not constitute a bona fide offering of goods or services.
In the absence of a statement of the Respondent and in view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Disputed Domain Name the Respondent was or should have been aware of the trademarks, since at the same time, the respondent registered the domain name for <marlboroliquids.com> which directly refers to the Complainant's best-known trademark and the trademark BENSON & HEDGES is well-known and established as well.
It is under these facts inconceivable to the Panel that the Respondent did not know the Complainant and its business with the two brands Marlboro and Benson & Hedges.
Under these circumstances, the Panel concludes that the Disputed Domain Name has been registered in bad faith.
The Disputed Domain Name resolves to a website which contains links to websites offering competing products. This is an indication that the Disputed Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation or endorsement of the website to which the Disputed Domain Name resolves, and of the services offered there, within the meaning of paragraph 4(b)(iv) of the Policy. In addition, the fact that the Respondent did not only register the Disputed Domain Name, but also the domain name <marlboroliquids.com> on the same day also shows that there was an intent to take advantage of the Complainant's well-known trademarks for commercial gain.
Therefore, the Panel concludes that the Disputed Domain Name has been registered and is being used in bad faith.
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 <bensonandhedges-liquids.com> be transferred to the Complainant.
Peter Wild
Sole Panelist
Date: December 16, 2017