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Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com [2005] GENDND 280 (26 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com

Case No. D2005-0171

1. The Parties

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

The Respondent is Michele Dinoia, SZK.com, Pineto, Italy.

2. The Domain Name and Registrar

The disputed domain name <marlborocigarette.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic, Inc.”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2005. On February 14, 2005, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On February 16, 2005, OnlineNic, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2005. The Center verified that the Complaint together with the amendment to 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 March 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2005.

The Center appointed Isabelle Leroux as the sole panelist in this matter on April 12, 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 under the famous MARLBORO trademarks.

For many decades, the Complainant has used the MARLBORO trademarks in connection with its tobacco and smoking related products.

The Complainant is the registered owner of various MARLBORO trademarks on the Principal Register of the USPTO.

The MARLBORO trademarks are among the most valuable trademarks in the world (see The 100 Top Brands, Business Week, August 2, 2004).

On July 9, 2003, the Respondent registered the domain name <marlborocigarette.com>.

On January 24, 2005, the Complainant wrote to the Respondent so as to obtain the cancellation or the transfer of the domain name <marlborocigarette.com>.

The Respondent did not reply to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the famous MARLBORO trademarks, used in connection with tobacco and smoking-related products.

MARLBORO trademarks are distinctive and are uniquely associated with the Complainant and its products.

The Complainant recently became aware that Respondent had registered the domain name <marlborocigarette.com>, which is associated with a commercial directory website devoted to smoking and to the sale of cigarettes.

The <marlborocigarette.com> domain name is confusingly similar to the MARLBORO trademarks because it wholly incorporates the valuable MARLBORO trademarks.

Because Respondent’s domain name is associated with a website that provides links to other sites that sell tobacco products, the very products for which the MARLBORO trademarks have become so famous, consumers who have accessed Respondent’s website are likely to be confused into believing that the website located at “www.marlborocigarettes.com” is endorsed, sponsored, operated by, or otherwise affiliated with the Complainant.

Respondent’s misappropriation of the MARLBORO trademarks in the domain name <marlborocigarette.com> clearly dilutes the distinctive quality of the Complainant’s well-known trademarks.

The Respondent has no rights or legitimate interests in the <marlborocigarette.com> domain name.

The Respondent has never sought or obtained any trademark registrations of “Marlboro”, or license, or permission, either express or implied.

Respondent’s misappropriation of the MARLBORO trademarks as part of the <marlborocigarette.com> domain name is no accident.

Respondent chose to use this famous trademark to draw consumers who smoke to its website by capitalizing on users’ association of the MARLBORO trademarks with the Complainant’s tobacco products.

The Respondent has registered the disputed domain name in bad faith by doing so knowing of the Complainant’s rights in the MARLBORO trademarks.

Respondent’s failure to respond to Complainant’s attempts to make contact concerning the <marlborocigarette.com> domain name also demonstrates bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 seems applicable”.

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <marlborocigarette.com> is made up of the Complainant’s trademarks with the addition of the word “cigarette” which does not affect the attractive power of the famous trademark “MARLBORO”.

On the contrary, the addition of the word “cigarette” strengthens the risk of confusion since it directly refers to the products marketed under the famous trademark MARLBORO.

Furthermore, the presence of the “.com” generic top-level-domain in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Consequently, the Panel finds that the disputed domain name is confusingly similar to the registered trademarks MARLBORO.

B. Rights or Legitimate Interests

The Registrant of the disputed domain name has not filed any Response to the Complaint and thus has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark.

The fact that the Respondent associates the disputed domain name with a commercial directory website devoted to smoking and to the sales of cigarettes does not justify prior rights or legitimate interests in the said domain name.

On the contrary, such a website creates a confusion in the public mind since the Internet users may think that the litigious website is sponsored by the Complainant.

Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

By not submitting a Response, the Respondent has failed to demonstrate that he has rights or legitimate interests in the disputed domain name.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Policy, Paragraph 4(b), lists certain circumstances that may, “in particular but without limitation”, be evidence of bad faith.

In the present case, the bad faith of the Respondent may be established by the following elements:

- The Complainant’s trademarks are not only distinctive but also largely used and well-known all over the world. Therefore, the Panel considers that the Respondent knew the trademarks of the Complainant when acquiring the disputed domain name. This undisputed knowledge of the Complainant’s trademarks is confirmed by the addition of the word “cigarette” in the disputed domain name and by the association with a website devoted to smoking and to the sales of cigarettes. (see Sony Kabushifi Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).

- The Registrant has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

- By associating the disputed domain name with a website which provides links to other websites that sell tobacco products and smoking information, the Respondent has clearly intended to benefit from the famous MARLBORO trademarks to attract Internet users and create an impression of association with the Complainant. There is no doubt that the Respondent has used the disputed domain name to capitalize on the fame of the MARLBORO trademarks.

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <marlborocigarette.com> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Dated: April 25, 2005