Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Rehman Khan of Karachi, Sindh, Pakistan.
The disputed domain name <marlboro-off.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2019, 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 Complainant on February 4, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 8, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2019.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on March 6, 2019. 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.
According to the publicly available WhoIs information, the Domain Name was registered on November 9, 2018 and it resolved to a website displaying Complainant’s trademark.
Complainant is the owner of numerous trademark registrations within the United States, including the following relevant to this matter (“Complainant’s Mark”):
|
TRADEMARK |
JURISDICTION / TM OFFICE |
REGISTRATION NUMBER |
REGISTRATON DATE |
GOODS |
|
MARLBORO® |
US / USPTO |
68,502 |
April 14, 1908 |
Cigarettes |
|
MARLBORO® |
US / USPTO |
3,365,560 |
January 8, 2008 |
Tobacco Products, Namely, Snus |
|
MARLBORO® |
US / USPTO |
3,419,647 |
April 29, 2008 |
Tobacco Products, Namely, Smokeless Tobacco |
Complainant uses these trademarks in connection with several variations of MARLBORO brand cigarettes.
Complainant is also the registered owner of the domain names <marlboro.com> (which points to Complainant’s website at “www.marlboro.com”) and <marlboro.net>.
Complainant contends that it has spent considerable time and money protecting its intellectual property rights through advertising and promoting Complainant’s Mark throughout the United States of America and has thus developed substantial goodwill in Complainant’s Mark.
Complainant submits that through its widespread and extensive efforts, Complainant’s Marks have become distinctive worldwide and are uniquely associated with Complainant and its products.
Complainant states that the Domain Name is confusingly similar to Complainant’s Mark, as it is made up of Complainant’s Mark in its entirety, with the addition of a hyphen and the added letters “off” at the end. The Domain Name is said to resolve to a website which prominently displays Complainant’s Mark which Complainant submits furthers consumer confusion and amounts to passing off.
Complainant notes that Respondent registered the Domain Name on November 9, 2018, which is significantly after the first registration of Complainant’s Mark in 1908, first use in commerce in 1883, and registration of Complainant’s <marlboro.com> domain name in 2000.
Complainant goes on to state that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark.
Further, Complainant contends that Respondent is not commonly known by the Domain Name and therefore cannot be regarded as having acquired rights to or legitimate interests in the Domain Name.
Complainant asserts that, as Complainant’s Mark is a world famous trademark, it is unlikely that Respondent did not know of Complainant’s rights in Complainant’s Mark at the time of registration. Complainant goes on to claim that Respondent has registered the Domain Name in bad faith by causing confusion and benefiting from Complainant’s Mark, by redirecting Internet users to the Domain Name’s website.
Respondent did not reply to Complainant’s contentions.
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used and registered (relevantly in the United States) and that Complainant has for many years marketed and sold, inter-alia, cigarettes and tobacco products under and by reference to Complainant’s Mark.
Complainant contends that the Domain Name reproduces Complainant’s Mark in its entirety, save for the addition of a hyphen and the letters ‘off’. It is unclear what the added letters “off” are meant to denote. What is however clear is that the addition of this matter does nothing to remove the distinctive character of Complainant’s Mark or distinguish the Domain Name from Complainant’s Mark.
Respondent has made no effort to explain its actions or refute the allegations made by Complainant. In the absence of such response it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant argues first that Respondent is not sponsored by or affiliated with Complainant, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Secondly, Complainant contends that Respondent is not commonly known by the Domain Name. Thirdly, Complainant argues that Respondent is wrongly redirecting Internet users to the Domain Name’s website.
Again, in the absence of any response or explanation, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is therefore satisfied that the second element of the Policy has been met.
Given Complainant’s use and registration of Complainant’s Mark, and its international repute the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name and since. The Domain Name consists of Complainant’s Mark followed by a hyphen and the letters ‘off’. As a result, Internet users might reasonably believe that the Domain Name is somehow associated with or endorsed by Complainant, contrary to the fact.
The Panel thus finds that the third limb of the Policy has been met.
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 <marlboro-off.com> be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: March 19, 2019