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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Incorporated v. r9.net
Case No. D2003-0004
1. The Parties
The Complainant is Philip Morris Incorporated ("Philip Morris"), 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 r9.net of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <marlboro.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 3, 2003. On January 7, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 7, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 on January 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2003.
The Center appointed Sandra A. Sellers as the sole Panelist in this matter on February 14, 2003. 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
Philip Morris manufactures, markets and sells cigarettes, including cigarettes under its MARLBORO® trademark. MARLBORO® cigarettes have been made and sold by Philip Morris (and various predecessor entities) since 1883. For many decades, Philip Morris USA has used the MARLBORO® mark in connection with its tobacco and smoking related products. Philip Morris USA also sells cigarettes under variations of this MARLBORO® mark including, without limitation, MARLBORO LIGHTS® and MARLBORO® LIGHTS MENTHOL cigarettes. The MARLBORO® mark and these and other numerous variations of the mark are referred to herein as the "Marlboro Marks."
Philip Morris is the registered owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office, all of which are valid, subsisting and incontestable pursuant to 15 U.S.C. § 1065:
April 14, 1908
Marlboro Red Roof Design Label
July 25, 1972
May 11, 1976
Marlboro Lights Label
May 11, 1976
Marlboro Lights Menthol Label
June 20, 1989
The Marlboro Marks are reportedly among the most widely recognized trademarks in the United States, and Philip Morris USA has developed significant goodwill in these marks.
Respondent registered <marlboro.com> on March 6, 2000.
Complainant recently became aware that Respondent had registered the domain name <marlboro.com>, which linked to a website that, upon information and belief, is a fabricated "mock-up" of a web page "under construction," created for the sole purpose of displaying banners and advertisements. A printout was attached as Annex 7.
The home page is primarily dedicated to displaying three banner advertisements: (1) a textual and banner advertisement for Sell.com, Inc., an online classifieds company; (2) a banner advertisement for AdultFriendFinder.com (billing itself in the advertisement as the "world’s largest sex personals"); and (3) a banner advertisement for Starluck Casino, an online gambling service.
In addition to <marlboro.com>, Respondent has registered 100 other domain names. (Annex 8.) Nearly all of these other registered domain names, which include famous trademarks owned by third parties (e.g., <pillsbury.net>, <schlitz.net>, <biltmore.net>, and <honeywell.net>), as well as other, generic terms (e.g., <frosty.net>, <ridge.net>, <nighttime.net>, <deportation.com>, <sweatshirt.net>, and <gown.net>), link to active, "under construction" websites virtually identical to the "www.marlboro.com" website, and offering identical banner advertisements. (Annex 9).
On October 16, 2002, Philip Morris wrote to Respondent (via both e-mail and U.S. mail) stating that Respondent’s registration and use of the disputed domain name infringed Complainant’s valuable rights in the Marlboro Marks and violated the Anticybersquatting Consumer Protection Act. (Annex 11.) In that correspondence, Philip Morris USA demanded that Respondent transfer the disputed domain name to Philip Morris USA. Having received no response to that letter, Philip Morris USA sent a follow-up letter on November 15, 2002 (via both e-mail and U.S. mail). (Annex 12.) Respondent did not respond to either letter.
5. Parties’ Contentions
Complainant alleges that Respondent has misappropriated Complainant’s famous Marlboro Marks, and that the domain name is confusingly similar to the Marlboro Marks because the disputed domain name wholly incorporates the MARLBORO® mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain, and registered and uses the domain in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the Complainant’s mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith. The Complainant must meet these requirements despite Respondent’s default.
A. Identical or Confusingly Similar
The evidence shows that the Complainant clearly has rights in a family of registered marks incorporating the MARLBORO® mark, all of which are valid, subsisting and incontestable under 15 USC §1065. Indeed, the MARLBORO® mark was first registered 95 years ago, and reportedly is among the most widely recognized trademarks in the USA.
The disputed domain name, <marlboro.com>, incorporates the MARLBORO® mark in its entirety.
I find that the disputed domain name is identical or confusingly similar to Complainant’s registered marks.
B. Rights or Legitimate Interests
Complainant affirms that Respondent is not licensed, nor has Respondent obtained permission, either express or implied, from Complainant to use the Marlboro Marks, or any domain names incorporating such marks, either at the time Respondent registered and began using the domain name, or at any time since.
Respondent has not submitted any evidence of a legitimate interest in the disputed domain name. Pursuant to Rule 14(b), I draw an adverse inference that Respondent does not have any evidence.
Accordingly, I find that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under 15 USC §1072, registration of MARLBORO® and the other Marlboro Marks constitutes constructive notice of the marks. Respondent therefore had legal, if not actual, notice of Complainant’s marks prior to registering the disputed domain name. Indeed, the MARLBORO® mark has been registered for 95 years, and is one of the most famous trademarks in the USA; it is inconceivable that Respondent was not aware of the MARLBORO® mark when it registered the disputed domain name. I therefore find that the disputed domain name was registered in bad faith.
Paragraph 4(b) of the Policy states a non-exclusive list of factors that constitute evidence of bad faith use. In particular, Paragraph 4(b)(iv) includes use of the domain name intentionally to attract users for commercial gain. This paragraph is directly applicable in this situation.
The disputed domain name links to a website that appears to be a fabricated "mock-up" of a web page "under construction," created for the sole purpose of displaying banners and advertisements. The home page displays <marlboro.com> in prominent letters, but otherwise is dedicated to displaying three banner advertisements: (1) a textual and banner advertisement for Sell.com, Inc., an online classifieds company; (2) a banner advertisement for AdultFriendFinder.com (billing itself in the advertisement as the "world’s largest sex personals"); and (3) a banner advertisement for Starluck Casino, an online gambling service. Clearly, the disputed domain name is being used intentionally to attract users to these other sites, and thus is evidence of bad faith. See, e.g., Big Dog Holdings, Inc. v. Frank Day, NAF Case No. FA0093554 (March 9, 2000).
Such bad faith is further exacerbated in this case because Respondent uses the disputed domain name to promote adult services and gambling. See, e.g., Fairchild Publications, Inc. v. Saeid Yomtobian, WIPO Case No. D2000-1003 (February 14, 2001); Alta Vista Co. v. Geoffrey Fairbairn, WIPO Case No. D2000-0849 (October 13, 2000).
Respondent also has engaged in bad faith by providing incomplete contact information to the registrar, Tucows. See, e.g., Park Place Entertainment Corp. v. Bowno, WIPO Case No. D2001-1410 (January 29, 2001). The Whois listing for <marlboro.com> contains no street address (only a post office box number) and no phone or fax numbers.
Finally, it appears that this Respondent has engaged in a pattern of bad faith conduct by registering many domain names containing well-known marks, and using them to direct traffic to other sites for commercial gain. In addition to <marlboro.com>, Respondent has registered 100 other domain names. Nearly all of these other registered domain names, which include famous trademarks owned by third parties (e.g., <pillsbury.net>, <schlitz.net>, <biltmore.net>, and <honeywell.net>), as well as other, generic terms (e.g., <frosty.net>, <ridge.net>, <nighttime.net>, <deportation.com>, <sweatshirt.net>, and <gown.net>), link to active, "under construction" websites virtually identical to the "www.marlboro.com" website, and offer identical banner advertisements.
Accordingly, I find that Respondent has registered and used the domain name in bad faith.
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 <marlboro.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: February 28, 2003