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Philip Morris USA Inc. v. Discount Marlboro Cigarettes [2005] GENDND 301 (20 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Discount Marlboro Cigarettes

Case No. D2005-0238

1. The Parties

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

The Respondent is Discount Marlboro Cigarettes, Arad, Romania.

2. The Domain Name and Registrar

The disputed domain name <cigarettes-discount-marlboro.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2005. On March 4, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 4, 2005, 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 contacts. 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 March 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2005.

The Center appointed Adam Taylor as the sole panelist in this matter on April 7, 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 (and various predecessor entities) have manufactured, marketed, and sold cigarettes since 1883. For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking related products. The Complainant is the registered owner of trademark number 68,502 on the Principal Register of the United States Patent and Trademark Office for MARLBORO dated April 14, 1908, in US class 17.

The Respondent registered the disputed domain name on March 20, 2003. As of March 3, 2005, the domain name resolved to a website offering Marlboro and other competing brands of cigarettes for sale via affiliate links to another website entitled “Discount Cigarette Store”.

On January 25, 2005, the Complainant sent a cease and desist letter to the Respondent but this was returned undelivered.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant has spent substantial time, effort and money advertising and promoting the MARLBORO trademarks throughout the United States and has thus developed substantial goodwill therein. The MARLBORO trademarks have become distinctive and are uniquely associated with the Complainant and its products. These trademarks are among the most valuable trademarks in the world. Previous UDRP Panels already have determined that the MARLBORO^® trademark is famous.

The disputed domain name is confusingly similar to the MARLBORO trademarks because it wholly incorporates the valuable MARLBORO trademark. Prior UDRP Panels have recognized that the addition of a word to a famous trademark is insufficient to overcome a finding of confusing similarity. By incorporating the MARLBORO trademark with the mere addition of the words “cigarettes” and “discount”, Respondent clearly adopted a domain name that is confusingly similar to the MARLBORO trademarks.

The addition of the generic top-level domain name “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

When users arrive at the “www.cigarettes-discount-marlboro.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 to wrongfully capitalize on the Complainant’s goodwill in its MARLBORO trademarks to divert Internet traffic to their site.

Respondent’s use and registration of the disputed domain name has violated the Lanham Act, Federal Trademark Dilution Act and the Anticybersquatting Consumer Protection Act.

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed, could never do so. Neither is Respondent a licensee of the Complainant. Nor has Respondent obtained permission, either express or implied, from The Complainant to use the MARLBORO trademarks, or any domain names incorporating such trademarks, either at the time Respondent registered and began using the disputed domain name, or at any time since.

Respondent’s misappropriation of the MARLBORO trademarks as part of the disputed 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. When a complainant’s trademark is distinctive, it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, and thus traders such as Respondent could have no legitimate interest in the trademark.

Registered and Used in Bad Faith

Respondent has registered the disputed domain name in bad faith. Respondent knew of the Complainant’s rights in the MARLBORO trademarks. It is inconceivable that Respondent was unaware of such rights which have achieved worldwide fame. Even a simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO trademarks. Respondent is deemed to have constructive notice of the Complainant’s trademark rights by virtue of its federal registrations. Respondent’s website’s hosting of a link to another website that sells tobacco products, including Marlboro® cigarettes, further shows Respondent’s knowledge of the Complainant and its trademarks.

There is no other conceivable interpretation of Respondent’s registration and use of the disputed domain name other than that of bad faith. Respondent’s undisputed knowledge of the trademarks is of itself “strong evidence of bad faith”.

Respondent has used the disputed domain name in bad faith. Respondent has attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the MARLBORO trademarks. Respondent has used the disputed domain name to capitalize on the fame of the MARLBORO trademarks and attract internet users to a website that is a commercial directory containing links to other websites that sell tobacco products.

B. Respondent

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

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name 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 interests 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 Complainant has established extensive rights in the trademark MARLBORO.

The disputed domain name includes the Complainant’s trademark in its entirety together with the generic words “cigarettes” and “discount”. Such additional generic terms fail to dispel the connection between the domain name and the trademark; indeed the term “cigarettes”, at least, reinforces the link. See, eg, Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946 (February 13, 2003) (discount-marlboro-cigarettes.com) and Philip Morris Inc. v. Eddy Fitch, WIPO Case No. D2002-0869 (November 8, 2002) (<cheap-marlboro-cigarettes.net>).

It is well established that domain suffixes are disregarded for the purpose of this comparison.

The disputed domain name is therefore confusingly similar to the Complainant’s MARLBORO trademark.

The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, eg, Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

As to paragraph 4(c)(i), the Respondent has used the disputed domain name in connection with an offering of goods. However the Complainant has not licensed or otherwise authorized the Respondent to use its trademark and the Respondent has not submitted a response to deny the Complainant’s assertions concerning the inappropriate nature of the Respondent’s use of its trademark. Furthermore, the Panel has concluded below that the Complainant used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that the Respondent registered and has been using the disputed domain name in bad faith, to intentionally attract for commercial gain internet users to its website by trading on the goodwill associated with the MARLBORO trademark and creating a likelihood of confusion with the trademark as to source, sponsorship affiliation or endorsement of Respondent’s website and of the goods offered on the site (paragraph 4(b)(iv) of the Policy).

It is obvious from the use of “marlboro” in conjunction with “cigarettes” in the disputed domain name and from the nature of the website at that domain name that the Respondent was aware of the Complainant’s MARLBORO trademark when it registered the domain name.

The Respondent sought to create confusion by suggesting a connection with the trademark through the disputed domain name itself and also by means of its website. Two prominent logos at the top of the homepage include the word “marlboro” and, if not direct copies, the images at least call to mind the scenery and colour schemes used in the Complainant’s well-known advertising. Furthermore, the Respondent has used the Complainant’s trademark to sell not only the Complainant’s products but also those of the Complainant’s competitors.

The Panel concludes that the disputed domain name was registered and has been 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, <cigarettes-discount-marlboro.com>, be transferred to the Complainant.

Adam Taylor
Sole Panelist

Dated: April 20, 2005