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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Incorporated v. Alex Tsypkin
Case No. D2002-0946
1. The Parties
The Complainant is Philip Morris Incorporated, c/o Barry M. Krivisky, Esq., 800 Westchester Avenue, Rye Brook, NY 10573-1301, United States of America, represented by Arnold & Porter of United States of America.
The Respondent is Alex Tsypkin, 34 Cuba Avenue, 3420 Panama, of Panama.
2. The Domain Name and Registrar
The disputed domain name <discount-marlboro-cigarettes.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2002. On October 14, 2002, the Center transmitted by email to the registrar a request for verification in connection with the domain name at issue. On October 15, 2002, the registrar confirmed that the Respondent is listed as the registrant, provided contact details for the administrative, billing, and technical contacts and stated that the languages of the registration agreement were German and English. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 16, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response November 5, 2002. The Response was filed with the Center November 5, 2002.
On November 15, 2002, Complainant filed an unsolicited Reply, which neither contained newly discovered evidence not reasonably available to Complainant at the time of its Complaint nor addressed arguments by Respondent that Complainant could not reasonably have anticipated. Accordingly, for the reasons given in Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151) the Panel declines to admit the Reply.
The Center initially appointed Alan L. Limbury, Andrew Bridges and M. Scott Donahey as Panelists in this matter on December 18, 2002. The same day, the Parties informed the Center that Complainant and Respondent had agreed to settle this dispute and requested a suspension of the proceedings (until January 7, 2003), which was accepted by the Panel.
On December 19, 2003, Mr. Bridges informed the Center that he had discovered a potential conflict and had to withdraw from the Panel. In view of the possible termination of proceedings, the Center postponed the appointment of a new Panelist.
On January 7, 2003, Complainant sent a Request for Continuation of Suspension of Proceeding until January 14, 2003, which was granted by the Panel but on the basis that no further extensions would be granted.
On January 17, 2003, Complainant sent a further Request for Continued Suspension. However, the Panel was not disposed to grant any further extension. On February 4, 2003, the Center appointed Henry Olsson as co-Panelist in place of Andrew Bridges.
This Panel finds that it was properly constituted. Each member of 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 Language of the proceeding is English.
The Complaint discloses that in September 2002, Complainant commenced proceedings against Respondent in connection with the disputed domain name in the U.S. District Court for the Central District of California (No. CV-02-7015) alleging trademark infringement and other causes of action. Service of process has not been effected. Complainant contends this administrative proceeding should proceed as its only immediate recourse. Respondent has filed a full substantive Response to the Complaint and says there are no other legal proceedings that have been commenced or terminated. Pursuant to Rule 18(a) the Panel decides to proceed to a decision.
4. Factual Background (undisputed facts)
Complainant manufactures and sells cigarettes under the trademark MARLBORO, a mark that has been used in connection with tobacco and smoking related products since 1883 and which Complainant registered for cigarettes upon the Principal Register of the United States Patent and Trademark Office in 1908 (Regd. No. 68,502). Complainant has also registered the MARLBORO mark in other countries, as well as many other marks incorporating the word MARLBORO. Through extensive and widespread use, the MARLBORO mark has become one of the most famous and valuable in the world.
Complainant also uses a distinctive "red roof" logo which appears on some of its packaging. The "red roof" logo features as part of Complainant’s U.S. registered trademark No. 938,510, registered in 1972.
Respondent sells on the Internet at discount prices cigarettes manufactured in Europe. They are shipped to consumers from Belarus and Russia, where there are no laws regulating online sales or otherwise prohibiting the online sale of cigarettes. He registered the disputed domain name <discount-marlboro-cigarettes.com> on May 12, 2001, and uses it for a website offering for sale genuine MARLBORO cigarettes, produced at Complainant’s factories, as well as cigarettes made by competitors of Complainant.
Respondent’s home page is dominated by Complainant’s "red roof" logo and the words "Discount Cigarettes" in white superimposed over the red background of the "roof", followed just beneath the "roof" by the word MARLBORO in black on a white background. There follow small depictions of the packages of numerous brands of cigarette offered for sale, the first of which is MARLBORO, again featuring the "red roof" logo. Lower down, different varieties of Marlboro cigarettes are depicted, again with the logo, with prices and "Order it" tabs. Beneath this appears "Site of Company: Philip Morris products inc." At the end of the home page appears the following:
Marlboro, the Marlboro logo, and combinations thereof are trademarks of Philip Morris Incorporated (PM USA) in the United States, and Philip Morris Products S.A. (PMPSA) outside of the United States.
© Copyright 2000-2001 Discount Marlboro Cigarettes
5. Parties’ Contentions
The disputed domain name is confusingly similar to Complainant’s MARLBORO marks. Respondent attempts to pass off its website as an official or authorized website of Complainant by using the logo and in presenting the trademark information.
Respondent has no trademark registrations for MARLBORO nor could he obtain any. He is not a licensee of Complainant nor otherwise permitted to use Complainant’s trademarks or register the disputed domain name. Respondent chose this famous mark to draw consumers to his website by capitalizing on the fame of the mark. Accordingly he has no legitimate interest in the domain name.
Respondent knew of Complainant’s marks and copied the logo on his website. There is no conceivable interpretation of Respondent’s registration other than bad faith. He has used the domain name for commercial gain to attract consumers by creating a likelihood of confusion with Complainant’s marks as to the source, affiliation or endorsement of his website. Use of a domain name incorporating Complainant’s famous mark to sell competitors’ products is also use in bad faith, as is mimicking the look and feel of an official website of Complainant.
The disputed domain name is neither identical nor confusingly similar to Complainant’s trademark as it is a multiple word domain that is clearly distinguishable from Complainant’s single word trademark.
Respondent has rights and a legitimate interest in the disputed domain name because he operates a website that sells the product described by that name. His offering for sale and sales of genuine Marlboro cigarettes are lawful.
Under the UDRP, a Respondent’s rights and legitimate interest in a disputed domain name are established where the domain name incorporates a trademarked word that describes the product sold by Respondent. In Daimler Chrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, the Respondent sold parts for Mercedes automobiles using the domain name <mercedesshop.com>. Finding for Respondent, the panel noted that:
"it would be difficult, if not impossible for [r]espondent to avoid altogether the use of the word 'Mercedes . . .which is the normal term which, to the public at large, signify Complainant's cars."
Similarly, it would be impossible for Respondent to sell discount Marlboro cigarettes without use of the word "Marlboro."
In Ty Inc. v. Perryman, 306 F.3rd 509 (7th Cir. 2002) the Court said: "You can’t sell a branded product without using its branded name," and stated the domain name owner was not:
"free riding to any significant extent on Ty's investment in its mark. To say she was would amount to saying that if a used car dealer truthfully advertised that it sold Toyotas, or if a muffler manufacturer truthfully advertised that it specialized in making mufflers for installation in Toyotas, Toyota would have a claim of trademark infringement. Of course there can be no aftermarket without an original market, and in that sense sellers in a trademarked good's aftermarket are free riding on the trademark. But in that attenuated sense of free riding, almost everyone in business is free riding (at 512)."
Similarly, Respondent here has a perfect right to use the term "Marlboro cigarettes" to sell Marlboro cigarettes. Many other UDRP cases have reached similar results: see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; Grobet File Company of America, Inc. v. The Exchange Jewelry Supply, NAF Case No. FA 94960; K&N Engineering, Inc. v. Kinnor Services aka Phenomena Ltd., WIPO Case No. D2000-1077; ABIT Computer Corporation v. Motherboard Super Store, Inc., WIPO Case No. D2000-0399; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Hewlett Packard Company, v. Napier, NAF Case No. FA 94368; The Kittinger Company, Inc. v. Fisgus, eResolution Case No. AF-108A-B and The New Piper Aircraft, Inc. v. Piper.com, NAF Case No. FA0094367.
As in all of the above cases, Respondent here has engaged in the bona fide sale of goods in connection with the disputed domain name. This is a textbook example of a Respondent’s legitimate interest established by the bona fide sale of goods in connection with a domain name.
The same evidence that establishes Respondent’s legitimate interest demonstrates that Complainant cannot show bad faith. UDRP panels have held that where a Respondent engages in the bona fide sale of the goods associated with a trademark contained in domain name, there is no basis for finding bad faith registration or use. See Weber-Stephen Products Co. v. Armitage Hardware, supra.; ABIT Computer Corporation v. Motherboard Super Store, Inc., supra.; Hewlett Packard Company, v. Napier, supra.; Grobet File Company Of America, Inc. v. The Exchange Jewelry Supply, supra.; K&N Engineering, Inc. v. Kinnor Services aka Phenomena Ltd., supra. (no need to determine the lack of bad faith where legitimate interest had been established).
There is no evidence that Respondent registered the disputed domain to disrupt Complainant’s business. To the contrary, Respondent purchases Complainant’s products from authorized distributors, thus helping Complainant’s business.
Finally, there is no evidence that Respondent registered the disputed domain to attract users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site. There can be no confusion that this is a store that sells cigarettes, not a Philip Morris site providing information about them. Finally, as noted in the Ty Inc. case, supra., it is perfectly legitimate and necessary for resellers of Toyota cars and parts to use the word Toyota in a domain name.
Moreover, when consumers arrive at Respondent’s web site, it is clear that the site is a place where they can buy Marlboro cigarettes. Respondent is NOT attempting to pass itself off as an official, authorized Philip Morris USA site. There is a clear statement on the web page that the trademarks are owned by Philip Morris. The appearance of Complainant’s logo on Respondent’s web site creates no more confusion than a Marlboro Man advertisement in a convenience store. Consumers in the convenience store understand that it is a place where they can buy cigarettes, and that is exactly what they understand when they are at Respondent’s web site – it is simply a place where they can buy cigarettes.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No.D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No.FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121 and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The disputed domain name wholly incorporates Complainant’s famous trademark MARLBORO, used in connection with cigarettes since 1883. The inclusion of the word ‘cigarettes’ does nothing to dispel and serves only to reinforce the connection in the public mind between the word MARLBORO and Complainant: Wachovia Corp. v. InterMos, NAF Case No.FA111000102520. The inclusion of the word ‘discount’ further reinforces that connection: Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No.D2001-0929. The ".com" designation is inconsequential.
Accordingly the Panel finds the disputed domain name to be confusingly similar to Complainant’s MARLBORO mark. Complainant has established this element of its case.
B. Rights or Legitimate Interests
Complainant has not authorized Respondent to use its distinctive and famous MARLBORO mark nor the "red roof" logo. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.
Most of the cases on which Respondent relies involved authorized dealers. Respondent is not an authorized dealer. This is not dispositive because, in principle, it is not an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark.
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, (also a case of an authorized dealer) the learned Panelist held that, to be "bona fide" within paragraph 4(c)(i), the offering must meet several minimum requirements, including:
• Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods: Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use; Kanao v. J.W. Roberts Co., CPR Case No. 0109 (bait and switch is not legitimate); and
• the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., Case No. D2001-0211 (WIPO April 25, 2001), (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official website.
Here, Respondent is not confining his use of the disputed domain name to the resale of Complainant’s cigarettes by reference to Complainant’s mark. He is trading on the fame of Complainant’s mark to sell, inter alia, the products of Complainant’s competitors.
The Panel is satisfied the presentation of Respondent’s website is likely to mislead Internauts into believing the site is operated or endorsed by or affiliated with Complainant. In particular, the dominant position of the "red roof" logo and the presentation of the trademark and copyright information, without any statement as to the true ownership of the site or any disclaimer of association with Complainant, create a strong impression that the site is an official site of Complainant. It is unnecessary to decide whether any disclaimer could be effective.
Further, use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com>, WIPO case D2000-0847. Respondent cannot plausibly argue that he did not intentionally adopt his website presentation so as to benefit from the goodwill of the MARLBORO mark.
The Panel finds Respondent has no rights or legitimate interests in the disputed domain name. Complainant has established this element of its case.
C. Registered and Used in Bad Faith
It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).
Complainant has established this element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <discount-marlboro-cigarettes.com> be transferred to the Complainant.
Alan L. Limbury
M. Scott Donahey
Dated: February 13, 2003