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Philip Morris USA Inc. V. Cooltobacco.com akaIgor Rodionov [2005] GENDND 399 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. V. Cooltobacco.com akaIgor Rodionov

Case No. D2005-0245

1. The Parties

The Complainant is Philip Morris USA Inc., a corporation organized and existing under the laws of the Commonwealth of Virginia, United States of America, represented by Roberta L. Horton and Kristina M. Heiberger of the Law Firm Arnold & Porter LLP.

The Respondent is Cooltobacco.com aka Igor Rodionov of Saint-Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <marlboro-cigarettes.biz> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2005. On March 7, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On March 8, eNom, 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. 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 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2005.

The Center appointed Martin Michaus Romero as the sole panelist in this matter on April 26, 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 owns the following trademark registrations:

Trademark	Registration Number	Date Registered
Marlboro	68,502	April 14, 1908
Marlboro Red Roof Label (Roof Design Logo)	938,510	July 25, 1972
Marlboro Lights	1,039,412	May 11, 1976
Marlboro Lights Label	1,039,413	May 11, 1976
Marlboro Lights Menthol Label	1,544,782	June 20, 1989
Marlboro Ultra Lights Label	1,651,628	July 23, 1991

The Complainant submitted copies of the relevant print outs from the government online trademark database for these trademarks as Exhibit C. The trademarks are used and registered to distinguish tobacco and smoking relating products.

Complainant has used the trademarks, in a continuous and uninterrupted manner since 1883 and with the modern history of the brand beginning in 1955, and has established considerable goodwill in its mark throughout United States and the world.

Complainant’s trademark MARLBORO has been determined as famous by previous WIPO administrative panels, in which domain names such as <marlboro.com>, <discount-marlboro-cigarettes.com>, <marlboros.com>,

<cheap-marlboro-cigarrettes.net>, have been transferred to the complainant. 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.

5. Parties’ Contentions

A. Complainant

The Complainant stated in his complaint:

1. It has spent substantial time, effort and money advertising or promoting the MARLBORO trademarks through the United States and Philip Morris USA has developed substantial goodwill in the MARLBORO trademarks. The MARLBORO trademarks are duly registered and have been made and sold since 1883, with the modern history of the brand beginning on 1955.

2. The Respondent has no right to register the domain name

<marlboro-cigarettes.biz> and is improperly using the domain name to redirect Internet users to an active website in which the Respondent offers a commercial directory, a search engine and the top web results for the search term “cheap cigarettes”, which provides links to other websites that sell cigarettes.

On January 24, 2005, the Complaint wrote to Respondent (by email and Federal Express) stating that the Respondent’s registrations and use of the

<marlboro-cigarettes.biz> domain name infringes the Complainant’s trademark rights and violated the Anticybersquatting Consumer Protection Act.

The Respondent’s websites provide links to websites that promote tobacco 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 associated with <marlboro-cigarettes.biz> is endorsed, sponsored, operated by, or otherwise affiliated with the Complainant. Therefore, Respondent’s use and registration of the domain name violates Section 32(a) of the Lanham Act, 15 U.S.C. § 1114 and Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and is also a violation of the Federal Trademark Dilution Act.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name violates paragraph 4(a)(i) of the Policy, provided it is confusingly similar to the trademarks MARLBORO indicated in Exhibit C in which the Complainant has rights. The disputed domain name <marlboro-cigarettes.biz> is confusingly similar to the MARLBORO trademarks and it is used to offer goods similar to those distinguished by the MARLBORO trademarks and divert internet traffic to websites.

The Panel finds that the first element of the Policy has been met.

B. Rights or Legitimate Interests

The uncontested evidence indicates that the domain name was registered and has been used in order to divert Internet users and mislead the consumers. The Respondent has not received permission nor authorization to use the trademark MARLBORO. The Respondent is not (an individual, business or corporation) known by the name MARLBORO. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to prove any rights or legitimate interests in the domain name. In addition, Complainant’s use of the trademark MARLBORO precedes the registration of the domain name.

The Panel finds that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Based on the statements and documents submitted, the Panel considers that the registration and the use of the domain name, confusingly similar to the trademark has been made in bad faith. The Respondent has intentionally traded on the goodwill of the Complainant’s mark by trying to divert Internet users to cheap cigarettes. Thus, paragraph 4(a)(iii) of the Policy is satisfied.

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, <marlboro-cigarettes.biz> be transferred to the Complainant.

Martin Michaus Romero
Sole Panelist

Dated: May 10, 2005