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Philip Morris USA Inc. v. Sylvester Spinetta [2004] GENDND 758 (13 June 2004)

1. The Parties

The Complainant is Philip Morris USA Inc., Rye Brook, New York, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Sylvester Spinetta, Sharpsburg, North Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <marlboros.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2004. On April 30, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 3, 2004, Register.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 May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2004.

The Center appointed Henry H. Perritt, Jr. as the Sole Panelist in this matter on June 2, 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.

4. Factual Background

Philip Morris USA (“Philip Morris” or “the Complainant”) manufactures, markets, and sells cigarettes, including cigarettes under the MARLBORO trademark. Phillip Morris is the registered owner of the following trademarks registered on the Principal Register of the United States Patent and Trademark office: Marlboro (No. 68,502, April 14, 1908), Marlboro Red Roof Label (No. 938, 510, July 25, 1972), Marlboro Lights (No. 1,039, 412, May 11, 1976), Marlboro Lights Label (No. 1,039,413, May 11, 1976), Marlboro Lights Menthol Label (No. 1,544,782, June 20, 1989), Marlboro Ultra Lights Label (No. 1,651,628, July 23, 1991).

5. Parties’ Contentions

A. Complainant

Philip Morris USA has spent substantial time, effort and money promoting the MARLBORO trademarks throughout the United States, and has developed substantial goodwill in the marks. Several WIPO panels have determined that the MARLBORO trademark is famous: Philip Morris, Inc. v. r9.net, WIPO Case No. D2003-0004 paragraph 4 (February 28, 2003) transferring the domain name <marlboro.com>; characterizing MARBORO as among most widely recognized trademarks in US; Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946 paragraph 4 (February 13, 2003) (transferring domain name <discount-marboro-cigarettes.com>, and characterizing MARLBORO trademark); Philip Morris Inc. v. Eddy Fitch, WIPO Case No. D2002-0869 paragraph 4 (November 8, 2002) (transferring <cheap-marlboro-cigarettes.net>; MARLBORO mark is well-known in US).

Respondent registered the domain name <marlboros.com> and used the domain name to redirect Internet users to an active website “www.totalsmokes.com,” with which Philip Morris USA cigarettes and competing brands are offered for sale. On April 14, 2003, Philip Morris USA wrote to Respondent, alleging that Respondent’s use of the <marlboros.com> domain name infringed Philip Morris’s rights in the Marlboro trademarks and violated the Anti Cybersquatting and Consumer Protection Act, and demanded that Respondent cease using the domain name, and either cancel it or transfer it to Philip Morris.

Respondent at other times has offered the <marlboros.com> domain name for sale for a price in excess of his documented out-of-pocket costs directly related to the domain name.

Philip Morris contends that the disputed domain name is confusingly similar to Philip Morris’s trademarks, and that Respondent’s use of the domain name violates the Lanham Act, the Dilution Act, and the Anticybersquatting Act. It contends that Respondent has no rights in the domain name, and that his registration and use of the domain name constitutes bad faith.

B. Respondent

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

6. Discussion and Findings

Under the Policy and Rules, when a Respondent defaults, the Panel may choose to accept the Complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy, sufficient to order cancellation or transfer of the disputed domain name.

A. Identical or Confusingly Similar

The domain name <marlboros.com> is identical to or confusingly similar to the MARLBORO mark. All of the relevant authority embraces the proposition that the addition of an “s” to the letters constituting a trademark fails to negate legal identity or similarity to the mark. See OfficeMax, Inc. and OMX v. Mark Braska, WIPO Case No. D2002-0431 paragraph 6(c) (June 27, 2002) (finding that addition of single letter to a domain name does not defeat finding of confusing similarity; citing cases); accord Shields v. Zuccarini, [2001] USCA3 120; 254 F.3d 476, 483 (3d Cir. 2001) (slight misspelling or alteration of registered mark satisfied element of confusing similarity; affirming judgment for plaintiff under ACPA); Educational Tours, Inc. v. Hemisphere Travel, Inc., No. 04 C 0559, 2004 WL 887417 (N.D. Ill. April 26, 2004) (denying motion to dismiss; registering domain name that is slight misspelling of protected mark constitutes impermissible “typosquatting”).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent was commonly known by the name “Marlboro”. Policy, paragraph 4(c)(ii). It has not used the disputed domain name “in connection with the bona fide offering of goods and services.” Policy, paragraph 4(c)(i). It is not making legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers . . . .” Policy, paragraph 4(c)(iii). The fame of the MARLBORO mark put the Respondent on constructive notice of ownership of the mark by another when he registered it, negating the possibility of innocent belief that he could enjoy independent rights in it. Moreover use of a protected mark belonging to another to sell goods branded by the other, does not constitute a bona fide offering of goods or services. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 paragraph 6 (July 21, 2000) (using a protected mark in a domain name to sell goods identified with complainant does not constitute bona fide offering of goods under paragraph 4(a)(i) of the Policy).

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to sell cigarettes branded as MARLBOROs establishes that he meant to trade on Philip Morris’ goodwill in the brand, thus establishing bad faith under paragraph 4(b)(iv) of the Policy. See Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042 paragraph 6(c) (March 3, 2004) (by advertising products which might be generally associated with Complainant’s mark, Respondent attempted for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant’s mark, in violation of paragraph 4(b) of the Policy); Belo Corp. v. George Latimer, WIPO Case No. D2002-0329 paragraph 5(b)(iii) (May 16, 2002) (fame and longstanding use of mark by Complainant supports conclusion that Respondent’s use was opportunistic effort to trade on Complainant’s goodwill).

Respondent’s offering of the disputed domain name for sale at a price in excess of his documented out-of-pocket costs directly related to the domain name establishes bad faith under paragraph 4(b)(i) of the Policy. See VENTURUM GmbH v. Coventry Investments, Ltd., DomainCollection Inc., WIPO Case No. D2003-0405 paragraph 6(c) (July 21, 2003) (offering domain name for sale on website constitutes offer to sell to complainant, complainant’s competitors and others).

7. Decision

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, <marlboros.com> be transferred to the Complainant.

Henry H. Perritt, Jr.
Sole Panelist

Dated: June 13, 2004