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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1249727912 / bebek merokok, marlboro hijau

Case No. D2021-2120

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1249727912, Canada / bebek merokok, marlboro hijau, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <marlboromerokok.page> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2021, 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 5, 2021 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 8, 2021.

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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2021.

The Center appointed George R. F. Souter as the sole panelist in this matter on August 18, 2021. 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

The Complainant is a long-established manufacturer of cigarettes under its trademark MARLBORO.

Details of extensive registrations of its MARLBORO trademark have been supplied to the Panel. These include United States Registration No. 68502, registered on April 14, 1908.

Details of a number of decisions under the UDRP in which panels have recognised the MARLBORO as world-famous have also been supplied to the Panel. These include Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306.

The disputed domain name was registered on March 15, 2021, and resolves to a blank page website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its MARLBORO trademark, containing its MARLBORO trademark in its entirety, followed by the word “merokok”. The Complainant informs the Panel that the word “merokok” means “smoke” in the Bahasa Indonesian language.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, so far as the Complainant is aware, the Respondent is not generally known by the disputed domain name, and the Complainant has never granted permission to the Respondent to use its MARLBORO trademark in connection with registration of a domain name, or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel follows the panel in Philip Morris USA Inc v ICS Inc, WIPO Case No. D2013-1306, and prior cases referred to therein, and recognizes the Complainant’s MARLBORO trademark to be world famous.

The Complainant’s MARLBORO trademark is instantly recognizable in the disputed domain name. The additional word “merokok” does not prevent a finding of confusing similarly between the disputed domain name and the Complainant’s MARLBORO trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.page” to be irrelevant in the circumstances of the present case, and so finds.

The Panel considers that the disputed domain name is clearly confusingly similar to the Complainant’s MARLBORO trademark, and so finds.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel regards it as self-evident that the Complainant’s MARLBORO trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.

The Complainant’s MARLBORO trademark is recognizable in the disputed domain name. To the circa 200 million people who speak the Bahasa Indonesian language, the additional word “merokok” (smoke in English) would immediately recognized as a dictionary term connected to the Complainant’s products. The Panel finds that the composition of the disputed domain name affirms the Respondent’s registration in bad faith.

The disputed domain name resolves to an inactive page. Since the decision in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it has become well established in prior decisions under the Policy that the mere lack of present use of a domain name found to have been registered in bad faith does not avoid a finding of bad faith use of a disputed domain name. In the circumstances of the present case, the Panel considers that the disputed domain name would be likely to imply an unjustifiable connection with the Complainant, and that the Complainant has a legitimate concern in this regard. The fact that the disputed domain name resolves to a blank website does not prevent a finding of bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <marlboromerokok.page> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: September 1, 2021

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