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WIPO Arbitration and
Philip Morris USA Inc. v. n/a
Case No. D2004-0462
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter of Washington, DC, United States of America.
The Respondent is n/a of Afghanistan.
2. The Domain Name and Registrar
The disputed domain name <cheapmarlboro.com> is registered with eNom,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2004. On June 28, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2004, eNom, Inc. transmitted by e-mail to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made a WHOIS printout, which showed that the disputed domain name was registered with eNom, Inc., and that the current Registrant of the disputed domain name, as well as the administrative, technical and billing contacts, were listed as ‘n/a.’ 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 July 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2004.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 26, 2004. 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.
On August 2, 2004, the Panel issued Procedural Order No. 1 pursuant to paragraph 12 of the Rules, requesting from the Parties further statements or documents as to the rights within the meaning of paragraph 4(a)(i) of the Policy (if any) of the Complainant (Philip Morris USA Inc.) in the six registered trademarks owned by Philip Morris Incorporated annexed as Exhibit C to the Complaint, and requiring the Parties to submit any such further documents or statements no later than August 3, 2004. Procedural Order No. 1 also advised the Parties of their right of reply to any additional statements or documents submitted by the other Party, such reply to be filed no later than August 4, 2004.
On August 3, 2004, the Complainant submitted a letter
in response to Procedural Order No. 1, and additional exhibits consisting of
trademark assignment abstracts of title from the United States Patent and Trademark
Office. The Respondent did not make any submission in response to Procedural
Order No. 1, nor exercise its right of reply to the Complainant’s letter
and additional exhibits.
4. Factual Background
The complainant is a Virginia corporation with its principal place of business at Richmond, Virginia, United States of America. The Complainant was previously known as Philip Morris Incorporated, and changed its name to its present name on January 15, 2003. It manufactures, markets and sells cigarettes.
MARLBORO is one of the world’s most valuable brand names. The following registered trademarks incorporating the word MARLBORO appear on the Principal Register of the United States Patent and Trademark Office (hereafter, the “Registered Trademarks”):
(a) Registration No. 68,502, first registered April 14, 1908, for the word mark MARLBORO;
(b) Registration No. 1,039,412, first registered May 11, 1976, for the word mark MARLBORO LIGHTS;
(c) Registration Nos. 938,510, 1,039,413, 1,544,782 and 1,651,628, first registered July 25, 1972; May 11, 1976; June 20, 1989; and July 23, 1991, respectively, for various packet designs including the word MARLBORO.
The Registered Trademarks were all previously in the name of Philip Morris International. The Complainant’s change of name was registered with the United States Patent and Trademark Office in February 2003.
The disputed domain name was registered through eNom, Inc. The Registrant, Administrative Contact, Technical Contact and Billing Contact details of the registration were all completed in an identical manner, with ‘n/a’ for all fields except State Provinces (‘NJ’) and Country (‘AF’), and, therefore, provide no meaningful information about the Respondent.
The Administrative Panel has attempted to access the
disputed domain name to view its content, but has been unable to do so.
5. Parties’ Contentions
The Complainant states that it is the registered owner of the Registered Trademarks, and has used the MARLBORO trademark in connection with its tobacco and smoking-related products for many decades. It has invested heavily in the MARLBORO mark, which is now famous and one of the most valuable brands in the world.
The Complainant states that the Respondent has registered the disputed domain name and used it to attract Internet users to an active website offering for sale the Complainant’s cigarettes, as well as competing brands of cigarettes. The Complainant wrote to the Respondent at an e-mail address displayed on the website, demanding the cancellation of the website and other action. The Respondent replied that it had cancelled the disputed domain name and deleted the associated website. The Complainant states that those statements were false, the website is still active and although the Respondent no longer offers cigarettes for sale, it does use the website as a commercial directory with links to other sites, including those that sell smoking cessation products.
The Complainant states that the disputed domain name is confusingly similar to the Registered Trademarks because it wholly incorporates the valuable MARLBORO trademark. It alleges that the addition of a word to a famous trademark is insufficient to overcome a finding of confusing similarity. Further, when users arrive at the Respondent’s website, they may mistakenly believe that they are being directed to a website sponsored by the Complainant, enabling the Respondent to wrongfully capitalise on the Complainant’s goodwill in the Registered Trademarks.
The Complainant further alleges that the Respondent has violated various provisions of the Lanham Act, the Federal Trademark Dilution Act, and the Anticybersquatting Consumer Protection Act.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It does not have any trademark registrations for MARLBORO or any variations thereof, and is not a licensee of, nor has it obtained permission from, the Complainant.
Further, the Respondent has registered the disputed domain name in bad faith by doing so with knowledge of the Complainant’s rights in the Registered Trademarks. It is inconceivable that the Respondent was unaware of a brand with such worldwide fame. The Respondent has also used the disputed domain name in bad faith by attempting to attract Internet users, for commercial gain, to a website by creating a likelihood of confusion with the Registered Trademarks.
For these reasons, the Complainant requests that this Administrative Panel issue a decision ordering the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks:
The Administrative Panel accepts that the Complainant is the owner of the Registered Trademarks, and that MARLBORO is a famous trademark.
The disputed domain name is not identical to any of the Registered Trademarks,
but does entirely incorporate the MARLBORO trademark, adding the prefix ‘cheap’.
The practice of adding a prefix or suffix to a well-known trademark has been
the subject of numerous UDRP Decisions. Whether, in these circumstances, the
trademark and the disputed domain name are confusingly similar depends on many
factors, including the relative distinctiveness of the trademark and the non-trademark
elements of the domain name, and whether the non-trademark elements detract
from or contradict the function of the trademark as an indication of origin
(see: Pfizer Inc v. The Magic Islands, WIPO
Case No. D2003-0870 (December 31, 2003); Gianfranco Ferre’ S.p.A.
v. GFF Inc., WIPO Case No. D2004-0198 (May 3, 2004)).
In the present case, the disputed domain name is confusingly similar to the
Registered Trademarks for the following reasons: (i) MARLBORO is an invented
work (although phonetically almost identical to the geographical name ‘Marlborough’)
with a high degree of inherent distinctiveness reinforced by longstanding international
recognition so as now to amount to a famous mark; (ii) ‘cheap’ is
an ordinary descriptive word; (iii) the word ‘cheap’ exploits the
trademark signification of MARLBORO as an indication of origin as consumers
will understand the disputed domain name to refer to the sale of the Complainant’s
products at special prices. The prefix ‘cheap’ does nothing to dispel
and serves only to reinforce the connection in the public mind between the word
MARLBORO and Complainant: see Philip Morris Incorporated v. Alex Tsypkin
WIPO Case No. D2002-0946 (February 13, 2003).
Therefore, for these reasons, there is a confusing similarity between the Complainant’s Registered Trademarks and the disputed domain name, and so the first element required by the Policy is satisfied.
B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name.
From the Complainant’s evidence, it is clear that the Respondent, before any notice of the dispute, was using the domain name in connection with an offering of goods or services, viz., the Complainant’s own cigarette brands, competing cigarette brands, and smoking-cessation products.
The Respondent appears to be a parallel importer of cigarettes, offering for
sale not only the Complainant’s products, but also competing brands of
cigarettes and smoking-cessation products. To offer competing brands for sale
using a domain name confusingly similar to the Complainant’s trademark
is not a bona fide offering of goods within the meaning of paragraph
4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO
Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation
v. Technilab, Inc., WIPO Case No. D2000-1774
(February 26, 2001).
Paragraphs 4(c)(ii) and (iii) of the Policy are clearly not applicable in this case because there is no evidence that the Respondent is commonly known by the disputed domain name, and there is clearly a commercial use of the disputed domain name with the intention of commercial gain.
In the absence of any response from the Respondent providing any evidence to support any possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Administrative Panel, therefore, concludes that the Respondent has no legitimate rights or interests in respect of the domain name.
C. Whether the Respondent has Registered and Used the Disputed Domain Name in Bad Faith:
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Administrative Panel, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the website or other on-line 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 the website or location.
The MARLBORO trademark is one of the most famous brands in the world and was undoubtedly adopted by the Respondent in conjunction with the adjective ‘cheap’ to attract the maximum number of potential cigarette purchasers to its website. The Administrative Panel accepts that some of these users will be attracted to the Respondent’s website in the belief that it has some connection with the Complainant’s trademark as to source, affiliation or endorsement; for example, that it relates to some form of promotional activity by the Complainant or an affiliated entity. Accordingly, the circumstances referred to in paragraph 4(b)(iv) of the Policy are satisfied.
Further, the total failure to provide any contact details with the registration, and the false statements as to the cancellation of the domain name and the deletion of the associated website made in response to the Complainant’s letter, are corroborative evidence of bad faith in this case.
For these reasons, the Administrative Panel concludes
that the disputed domain name has been registered and is being used 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 <cheapmarlboro.com> be transferred to the Complainant.
David J.A. Cairns
Date: August 5, 2004