1. The Parties
The Complainant is Philip Morris USA Inc., of Richmond, Virginia , United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Chen Huang, of Zengdu, Guangzhou, China.
2. The Domain Names and Registrar
The disputed domain names <marlborocigaretts.com>, and <marlborocigerettes.com>
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com, (herein the “domain
names in dispute”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 26, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names in dispute. On January 26, 2005 iHoldings.com Inc. d/b/a DotRegistrar.com 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 February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2005.
The Center appointed J. Nelson Landry as the sole
panelist in this matter on March 18, 2005. 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 manufactures, markets, and sells cigarettes, including cigarettes under its MARLBORO trademarks. MARLBORO cigarettes have been made and sold by the Complainant and its predecessors in title since 1883. For many decades, the Complainant has used the MARLBORO trademarks in connection with its tobacco and smoking related products. The Complainant also sells cigarettes under variations of its MARLBORO trademark including, without limitation, MARLBORO LIGHTS and MARLBORO LIGHTS MENTHOL cigarettes.
The Complainant is the registered owner of numerous trademarks on the Principal Register of the United State Patent and Trademark Office, namely MARLBORO since 1908, MARLBORO RED ROOF LABEL since 1972, MARLBORO LIGHTS since 1976, MARLBORO LIGHTS LABEL since 1976, MARLBORO LIGHTS MENTHOL LABEL since 1989 and MARLBORO ULTRA LIGHTS LABEL since 1991. (herein as the “MARLBORO Trademarks” or the “Trademarks”)
The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO Trademarks throughout the United States.
The domain names in dispute were registered on October 17, 2003 by the Respondent.
On December 4, 2003, the Complainant wrote to Respondent
stating that Respondent’s registration and use of the domain names in
dispute infringed Complainant’s rights in the MARLBORO Trademarks and
violated the Anticybersquatting Consumer Protection Act. In its letter, the
Complainant demanded that Respondent immediately cancels the registration and
ceases the use of the MARLBORO word trademark in connection with any website
or web content. The letter was returned to the Complainant as undeliverable,
however the latter received no response or bounce back message to its email
message containing the letter.
5. Parties’ Contentions
The Complainant represents that it has spent substantial
time, effort and money advertising and promoting the MARLBORO Trademarks throughout
the United States and has thus developed substantial goodwill in the Trademarks
which have become distinctive and are uniquely associated with the Complainant
and its products. These trademarks are among the most valuable trademarks in
the world and reportedly are among the most widely recognized trademarks in
the USA. In fact, Business Week and Interbrand found in 2003 that the MARLBORO
Trademarks are the ninth most valuable brand in the world. Moreover, previous
UDRP panels already have determined that the MARLBORO Trademarks are famous.
See Philip Morris Inc. v. r9 net, WIPO
Case No. D2003-0004, Philip Morris Inc. v. Tsypkin, WIPO
Case No. D2002-0946, Philip Morris USA Inc. v. Sylvester Spinetta,
WIPO Case No. D2004-0317 and Philip
Morris Inc. v. Fitch, WIPO Case No. D2002-0869.
The Complainant submits that the Respondent has registered the domain names in dispute and has used same to attract Internet users to active websites located at <marlborocigaretts.com> and <marlborocigerettes.com>. Furthermore, the Respondent has offered search engines and commercial directories with links to other websites that among other things, sell cigarettes and provide coupons.
According to the Complainant, by misappropriating Complainant’s well-known MARLBORO Trademarks, the Respondent has committed several substantive violations of the Lanham Act, section 32(a) and 43(a).
The Complainant submits that the domain names in dispute
are confusingly similar to the MARLBORO Trademarks because they wholly incorporate
the valuable MARLBORO distinctive element with the mere addition of the misspelled
words “cigarettes” or “cigarettes”. Prior UDRP panels
have recognized that the addition of a word to a famous trademark is insufficient
to overcome a finding of confusing similarity, to the contrary it merely exacerbates
this confusion. See Wells Fargo & Co. v. Shing, NAF Claim No. FA205699;
Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO
Case No. D2002-0215; Wachovia Corporation v. InterMos, NAF Claim
No. FA0111000102520 and America Online, Inc. v. Yeteck Communication,
Inc., WIPO Case No. D2001-0055. Moreover,
as previous panels have found, the addition of the generic top-level domain
name “.com” is irrelevant. Aous Uweyda v. Abdallah Sheet,
NAF Claim No. FA 165119 (2003); Universal City Studios, Inc. v. G,A.B. Enterprises,
WIPO Case No. D2000-0416. Thus, the Respondent
clearly adopted domain names that are confusingly similar to the MARLBORO Trademarks.
According to the Complainant, when users arrive at the “www.marlborocigaretts.com” and “wwwmarlborocigerettes.com” website, they may mistakenly believe that they are at a website sponsored by the Complainant. This type of “initial interest confusion” permits the Respondent wrongfully to capitalize on Complainant’s goodwill in its MARLBORO Trademarks to divert Internet traffic to its site. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999).
Because Respondent’s websites provide links to websites that promote tobacco products, the very products for which the MARLBORO Trademarks have become so famous, consumers who have accessed Respondent’s websites are likely to be confused into believing that the websites associated with “www.marlborocigaretts.com”, and “www.marlborocigerettes.com” are endorsed, sponsored, operated by, or otherwise affiliated with the Complainant.
Furthermore, the Complainant contends that Respondent has violated other U.S. laws, namely the Federal Trademark Dilution Act (the “Dilution Act”) prohibits the use of third-party trademarks or names that dilute the distinctive quality of those famous trademarks, see Playboy Enters., Inc. v. Asiafocus International, Inc., No 97-734-A, 1998 WL 724000 (1998) and Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F. Supp. 2d 488, 503 (1999) 15 U.S.C. § 1125(c) and the Anticybersquatting Consumer Protection Act.
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain names in dispute in that it has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, is not a licensee of the Complainant nor has the Respondent obtained permission, either express or implied from the Complainant to register and use the domain names in dispute.
According to the Complainant, Respondent’s misappropriation
of the MARLBORO Trademarks as part of the domain names in dispute is no accident.
The Respondent chose to use the Trademarks to draw consumers who smoke to its
website by capitalizing on users’ association of the MARLBORO Trademarks
with the Complainant’s tobacco products, see Telstra Corporation Limited
v. Nuclear Marshmallows, WIPO Case No.
D2000-0003, wherein the Panel held that “traders” such as the
Respondent could have no legitimate interest in the trademark.
The Complainant finally contends that the domain names
in dispute were registered and used in bad faith in that the Respondent has
registered the domain names in dispute in bad faith by doing so with knowledge
of the Complainant’s rights in the MARLBORO Trademarks, it being simply
inconceivable that the Respondent was unaware of the Complainant’s rights
in the MARLBORO Trademarks, which have achieved worldwide fame. Even a simple
Internet search should have revealed the Complainant’s extensive use of
the MARLBORO Trademarks as a source identifier for its tobacco products through
basic searches of the USPTO records that are readily accessible. As such, the
Respondent is deemed to have constructive notice of the Complainant’s
Trademark rights by virtue of its federal Registrations in the MARLBORO Trademarks.
See Marconi Data Systems Inc., v. IRG Coins and Ink Source, Inc., WIPO
Case No. D2000-0090.
Furthermore the Complainant submits that in a similar
situation, the fame and reputation of a complainant’s trademark was persuasive
in determining a respondent’s bad faith intent. In Telstra, the panel
found that the complainant’s numerous trademark registrations, together
with complainant’s wide reputation in the name “Telstra”,
compelled a finding that the respondent’s registration of the domain name
<telstra.org> was made in bad faith. See Telstra Corporation Limited
v. Nuclear Marshmallows, WIPO Case No.
D2000-0003, with Respondent’s undisputed knowledge of Complainant’s
trademarks. The Respondent has used the domain names in dispute in bad faith
within the meaning of paragraph 4(b)(iv) of the Policy because he has attempted
to attract Internet users, for commercial gain, to a website by creating a likelihood
of confusion with the MARLBORO Trademarks and to capitalize on the fame of the
MARLBORO Trademarks and attract Internet users to websites that provide links
to other websites promoting tobacco products and has been “unjustly enriched
by a potential increase in users who are legitimately seeding a website operated
by Complainant but mistakenly visited Respondent’s website.” See
ESPN, Inc. v. Players Sportsbook & Casino, NAP Claim No. FA95402
and Chase Manhattan Corporation v. John Whitely, WIPO
Case No. D2000-0346.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence shows that the Complainant clearly has rights in a family of registered Trademarks incorporating the MARLBORO distinctive element, all of which are valid, subsisting and incontestable under 15 USC § 1065. While the MARLBORO first Trademarks was registered about 95 years ago and widely used since, it is already reportedly among the most widely recognized trademarks at least in the United States of America.
The domain names in dispute incorporate the distinctive element MARLBORO of the Trademarks in its entirety and the adding of the descriptive and misspelled words “cigarettes” and “cigarettes” as well as “.com” does not diminish this clear appropriation of the Trademarks.
The Panel finds that the domain names in dispute are identical or confusingly similar to Complainant’s Trademarks
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain names by stating that the Respondent has registered the domain names in dispute, but that it is not making legitimate non-commercial or fair use of the said domain names.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks.
Considering the absence of any evidence of rights or legitimate interests in the domain names in dispute from the Respondent, pursuant to paragraph the Panel draws an adverse inference that the Respondent does not have any such evidence.
This Panel finds that the Respondent has no rights or legitimate interests in the domain names in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain names were registered and used in bad faith.
While under 15 USC § 1072 the registration of the numerous MARLBORO Trademarks constitutes constructive notice of the Trademarks to US citizens, this Panel considers that it is not necessary to debate and decide whether such constructive notice does apply to the Respondent who is located in China in view of the uncontradicted evidence in this case. The Complainant has alleged that a simple Internet search would have revealed Complainant’s extensive use of the MARLBORO Trademarks and even of their registration through basic searches of the U. S Patent and Trademark Office records that are readily accessible online. A visit of the Respondent’s website, as this Panel did, showing its structure and diversified links is ample demonstration of Respondent’s familiarity with Internet resources and that the Respondent could have easily performed these searches. This Panel cannot see under the present circumstances how the Respondent could not have any knowledge of the Trademarks of the Complainant particularly when first the Respondent associates Marlboro with the words “cigarettes” and “cigarettes” and second in his website he links and redirects the Internet visitor to websites of suppliers of numerous products, including smoking products. It is inconceivable to this Panel that the Respondent was not aware of the MARLBORO Trademarks when he registered the domain names in dispute.
This Panel therefore finds that the domain names in dispute were registered in bad faith by the Respondent.
Paragraph 4(b) of the Policy states a non-exclusive list of factors that constitute evidence of fad 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 to the present situation.
Relying on the evidence adduced by the Complainant and the decisions cited in support of its representations, the Panel has no difficulty in finding that the Respondent took advantage of the fame and goodwill associated with Complainant’s Trademarks thereby capitalizing on Internet users familiarity with the MARLBORO Trademarks in using the domain names in dispute to reach the website of the Respondent and thereby linking and redirecting the said users to other websites selling smoking products is clearly evidence of the intention by the Respondent and the fact that it is attracting Internet users for his commercial gain. The Panel has visited the website associated with the domain names in dispute and readily observed the numerous links to a considerable number of products and services such as smoking products, car rentals, hotels and trips and appreciated the clear evidence of the use of the domain names in dispute by the Respondent for commercial gain.
There is no need to consider and determine if the other grounds advanced by the Complainant to justify a finding of use of the domain names in bad faith by the Respondent. The Respondent was notified of Complainant’s representations of such improper use of the domain names in dispute for commercial gain and has not offered any evidence to the contrary.
This Panel finds that the Respondent has used the domain names in dispute in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the domain names <marlborocigaretts.com>, and <marlborocigerettes.com> are confusingly similar to the MARLBORO Trademarks;
(b) the Respondent has no rights or legitimate interest in the domain names in dispute;
(c) the domain names in dispute have been registered and are being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <marlborocigaretts.com>, and <marlborocigerettes.com> be transferred to the Complainant.
J. Nelson Landry
Date: April 13, 2005