WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Super Privacy Service LTD c/o Dynadot / Carol Hafner
Case No. D2019-1045
1. The Parties
The Complainant is Philip Morris USA Inc., United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Carol Hafner, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cannabismarlboro.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Super Privacy Service LTD c/o Dynadot 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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Center received informal email communication from the Complainant regarding the Respondent’s identity on May 15, 2019. On June 3, 2019, the Respondent Carol Hafner requested an extension to file a Response. On June 4, 2019, the Center granted the automatic 4-day Response extension until June 8, 2019. The Response was filed with the Center on June 8, 2019.
On June 13, 2019, the Complainant sought to file a supplemental filing in reply to the Response. On June 13, 2019, the Respondent filed a reply to the Complainant’s supplemental filing.
The Center appointed William R. Towns as the sole panelist in this matter on June 24, 2019. 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
The Complainant manufactures and sells tobacco products, including cigarettes sold under the MARLBORO trademark. The Complainant has used the MARLBORO mark with tobacco and smoking related products since as early as 1883, and obtained its first United States registration for the mark in 1908 (U.S. Reg. No. 68,502). The Complainant has since obtained further trademark registrations for MARLBORO in the United States and in other countries around the world, including a word plus design registration issued by the United States Patent and Trademark Office (“USPTO”) in 1972 (U.S. Reg. No. 938,510), which incorporates the Complainant’s distinctive “red roof” logo.
The disputed domain name <cannabismarlboro.com> was registered by the Respondent on February 10, 2019, using a privacy protection service. The Respondent has redirected the disputed domain to the Marijuana Domain Names website “www.marijuanadomainnames.com”, on which the disputed domain name has been offered for sale. The Respondent also is offering the disputed domain name for sale on the Sedo Marketplace with an asking price of USD 50,000.
5. Preliminary Issue: Parties’ Supplemental Submissions
As noted above, the Complainant lodged a supplemental filing with the Center in reply to the Response, following which the Respondent filed with the Center a reply to the Complainant’s supplemental filing. The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the Panel.
The Rules and relevant UDRP panel decisions further demonstrate a decided preference for single submissions by the parties absent exceptional circumstances that may require an opportunity for a party to respond to certain allegations or submissions by the other party. In such event, however, a party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 (and relevant decisions cited therein).
After reviewing the record in this case, and pursuant to paragraphs 10 and 12 of the Rules, the Panel accepts for filing the Parties’ supplemental submissions.
6. Parties’ Contentions
A. Complainant
i. Complaint
The Complainant submits that the disputed domain name <cannabismarlboro.com> is confusingly similar to the Complainant’s MARLBORO mark. The Complainant’s explains that its mark is recognizable in the disputed domain name, and asserts that the inclusion of the generic or descriptive term “cannabis” does not preclude a finding of confusing similarity under the first element of the Policy.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed, authorized or otherwise permitted to use the Complainant’s MARLBORO mark, and further represents that the Respondent has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent has neither used the disputed domain name in connection with a bona fide offering of goods or services nor made any legitimate noncommercial or other fair use of the disputed domain name. The Complainant observes that the Respondent instead has offered to sell the disputed domain name for USD 50,000, an amount greatly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant explains that its MARLBORO mark is extremely well-known, has been used by the Complainant since 1883, and has a strong presence on the Internet. The Complainant submits that the Respondent would have been aware of the Complainant’s famous MARLBORO mark when registering the disputed domain name, and reiterates that the Respondent has redirected the disputed domain name to a website on which the Respondent is offering the disputed domain name for sale, as well as advertising the disputed domain name for sale on www.sedo.com for USD 50,000. The Complainant contends that the Respondent has used the disputed domain name to target the Complainant’s famous mark, and should be found to have registered and used the disputed domain name in bad faith. The Complainant further asserts that the Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith, and urges that the Respondent use of a privacy protection service in the circumstances of this case is further indication of the Respondent’s bad faith intent.
ii. Complainant’s Supplemental Filing
The Complainant submits that the Respondent’s communication to the Panel on June 3, 2019, was improper and should not be deemed a response, and that the facts alleged in the Complaint should be taken as uncontroverted. Alternatively, the Complainant requests that the Panel consider additional issues discussed in the Complainant’s Supplemental Submission, as follows.
The Complainant’s dismisses the Respondent’s claim to have registered the disputed domain for use with the sale of recreational marijuana in Marlboro, New Jersey, once marijuana is legalized. The Complainant maintains the Respondent has admitted that the disputed domain name was meant solely to attract purchasers for the disputed domain name, including “fortune 500 corporations,” without regard to the potential sale of cannabis in Marlboro, New Jersey.
The Complainant further submits that the Respondent, having failed to demonstrate any plausible good faith use to which the disputed domain name could be put, is passively holding the disputed domain name, and attempting to capitalize on the Respondent’s bad faith registration by selling the disputed domain name to the Complainant. The Complainant further asserts, given the strength and reputation of the MARLBORO mark and the strong similarity of the disputed domain name to the mark, that the likelihood of confusion is such that bad faith may be inferred.
B. Respondent
i. Response
The Respondent submits that the disputed domain name is neither identical or confusingly similar to the Complainant’s MALRBORO mark. The Respondent describes that disputed domain name as a “geographic” domain name comprised of the term “cannabis” and “Marlboro”, which refers to the Marlboro Township of New Jersey, founded in 1848, with a present population of approximately 40,000 residents. The Respondent asserts there are numerous local businesses in New Jersey using the Marlboro name, including Marlboro College in Marlboro, Vermont, and other localities in various states in the United States using the name Marlboro.
The Respondent maintains that she has rights and legitimate interests in the disputed domain name, and submits the disputed domain name was not registered in bad faith and is not being used in bad faith. The Respondent represents she is originally from the Marlboro, New Jersey area (her current address is in South Dakota), and that for some time has been a proponent of legalizing marijuana in New Jersey and elsewhere. According to the Respondent, a domain name combining the words “Cannabis and Marlboro” would be well suited for use with a legal cannabis business in Marlboro, New Jersey, and the Respondent thus thought it a good name to register.
The Respondent acknowledges that the disputed domain name is currently for sale, and explains she is not actively marketing the disputed domain name to any great degree because the adult use of cannabis is not yet legal in the state of New Jersey, and in light of conflicts that remain between existing state and federal cannabis laws. The Respondent predicts, however, that once these conflicts are resolved, the opportunity for cannabis businesses in Marlboro, New Jersey will expand, and the Respondent thus sees no harm in listing her portfolio of geographically descriptive cannabis domain names for sale. The Respondent further represents she has registered a large number of such cannabis-formative domain names (over 1,000) and that many of these domain names include geographic locations in New Jersey. However, the Respondent states that she has registered only one domain name with the word “Marlboro”, and purely as a geographic reference to Marlboro, New Jersey.
ii. Respondent’s Supplemental Filing
The Respondent requests that the Complainant’s Supplemental Submission be discarded as filed outside the required time frame. But if the Complainant’s Supplemental Submission is considered, the Respondent insists her Supplemental Submission also should be considered. The Respondent submits that, pending the implementation of expected legislation legalizing marijuana in New Jersey, it is reasonable to make business decisions including securing a geographic name for use with an emerging new industry. However, the Respondent adds given the “unsure legal environment” of the cannabis industry that it would be unreasonable to disclose “concrete plans,” including plans based on geography.
The Respondent denies registering the disputed domain name to generate pay-per-click (PPC) advertising revenues and claims the PPC feature comes by default and cannot be disabled. The Respondent submits given pending legislation in New Jersey to legalize cannabis it would be reasonable for someone with a bona fide interest in the emerging legal cannabis industry to register domain names “locking down the industry” in various New Jersey communities. The Respondent maintains that offering to sell something if someone wants to buy it does not establish bad faith.
The Respondent contends that the Complainant is acting in bad faith and attempting to mislead by asserting a monopoly on the word “Marlboro,” given the Respondent’s previous explanation of the Marlboro Township in the Response. The Respondent asserts the word “Marlboro” can be used in numerous contexts that have no ties to the Complainant. The Respondent rejects to the Complainant’s reference to “Fortune 500” companies as inferring infringement. According to the Respondent, any number of large companies will “want in on the action” once the use of marijuana is legalized under federal law.
The Respondent reiterates that the disputed domain name was registered solely in reference to the Marlboro Township. The Respondent refers to other trademarks comprised of the Marlboro name, and characterizes this as a case in which a corporate giant is trying to muscle in on a little person who is attempting to get a foot in the door of a new industry by registering a relevant geographic domain name.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <cannabismarlboro.com> is confusingly similar to the Complainant’s MARLBORO mark, in which the Complainant has established rights through registration and long and extensive use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s well-known MARLBORO mark is clearly recognizable in the disputed domain name.2 The inclusion of the dictionary word “cannabis” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s MARLBORO mark; nor has the Respondent claimed to be commonly known by the disputed domain name. The record further reflects that the Respondent upon registering the disputed domain name listed it for sale on the Sedo Marketplace and on the Marijuana Domain Names Home website. The Respondent’s asking price for the disputed domain name is USD 50,000.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims to have registered the disputed domain name solely for use with a business enterprise involving the sale of marijuana (i.e., cannabis) in Marlboro Township, New Jersey, once the State of New Jersey has legalized marijuana. The Respondent predicts that will be soon. However, the Respondent has brought forward no evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the record reflects that the Respondent upon registering the disputed domain name promptly offered it for sale on the Marijuana Domain Names Home website and on the Sedo Marketplace site, at the considerable asking price of USD 50,000.
The Respondent actively promotes the sale of cannabis-formative domain names on the Marijuana Domain Names Home website, with which the Respondent appears to be affiliated. It is represented on that website that “[T]he legal cannabis industry is booming across the United States, Canada, and the world. . . The big players in the alcohol and tobacco industry even want in on the ganja business now.” Given such representations, it would strain credulity for the Respondent to claim to have been unaware of the Complainant and its well-known MARLBORO mark when registering the disputed domain name. Further, it is exceedingly clear from the record that the Respondent registered the disputed domain intending to sell the domain name at a considerable profit. In light of the foregoing, the Panel finds the Respondent’s claim to have registered the disputed domain name for use with the sale of legal marijuana in Marlboro Township, New Jersey to be pretextual. Internet users encountering a website to which the <cannabismarlboro.com> domain name resolved could easily believe the website they arrived at was affiliated with, sponsored by or endorsed by the Complainant.
Having regard to all of the relevant circumstances in this case, the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services, that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name. The Panel concludes from the record that the Respondent in all likelihood registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s well known MARLBORO mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
As consistently recognized in prior decisions of UDRP panels, through extensive and widespread use the MARLBORO mark has become one of the most famous marks in the world.4
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and more likely than not had the Complainant’s MARLBORO mark in mind when registering the disputed domain name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to exploit or otherwise profit from the Complainant’s trademark rights by selling the disputed domain name to the Complainant or other potential buyers for an amount considerably in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Panel also notes that the Respondent through use of a privacy service took steps to conceal her identity when offering the disputed domain name for sale.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. 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 <cannabismarlboro.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 4, 2019
1 See WIPO Overview 3.0, section 1.7 .
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
4 See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790; Philip Morris USA Inc. v. Cooltobacco.com akalgor Rodionov, WIPO Case No. D2005-0245; Philip Morris USA Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Philip Morris USA Inc. v. Sylvester Spinetta, WIPO Case No. D2004-0317.