Philip Morris USA Inc. v. tao liu
Claim Number: FA1207001455984
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is tao liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the National Arbitration Forum received payment on August 1, 2012.
On July 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marlboro-cigarettessale.com, postmaster@marlborocigarettescarton.com, postmaster@marlborocheapcigarettes.com, and postmaster@marlborocigarettesbuy.com. Also on August 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MARLBORO mark. Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain names <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com>, and that Respondent registered and uses the domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it has protectable rights in the MARLBORO mark under Policy ¶ 4(a)(i). In support of this argument, Complainant supplies its trademark registrations with the USPTO for the MARLBORO mark (e.g., Reg. No. 68,502 April 14, 1908). Complainant is not required under Policy ¶ 4(a)(i) to own a trademark registration in Respondent’s identified country of China. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established its rights in the MARLBORO mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant further contends that the <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names are confusingly similar to the MARLBORO mark. All of the disputed domain names contain the MARLBORO mark in whole. Further, all of the domain names contain the addition of the descriptive term “cigarettes,” while the <marlborocigarettescarton.com> domain name also features the descriptive term “carton.” The addition of descriptive terms is not sufficient to render a domain name distinct from a mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Further, the <marlboro-cigarettessale.com> domain name adds a hyphen to the mark, as well as the generic term “sale,” while the <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names add the generic term “cheap” or “buy.” The additions of a hyphen and generic terms are also not sufficient to distinguish a disputed domain name from a mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Lastly, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names are confusingly similar to Complainant’s MARLBORO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent was never known by any name that incorporates the MARLBORO mark. Further, Complainant states that Respondent has never been licensed or authorized to use the MARLBORO mark in any way or form. The WHOIS information identifies “tao liu” as the registrant of all of the domain names in question. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts that Respondent’s registration and use of the disputed domain names is evidence that Respondent does not have rights or legitimate interests in the domain names. Under Policy ¶ 4(a)(iii), Complainant contends that the disputed domain names do not resolve to active websites. Based upon the record, the Panel finds that Respondent is not using the <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration of the <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names is evidence of bad faith merely because of the number of domain names registered. The Panel agrees and finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Further, Complainant argues that Respondent’s failure to make an active use of the disputed domain names is further evidence of bad faith. The Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant also contends that, in light of the fame and notoriety of Complainant's MARLBORO mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro-cigarettessale.com>, <marlborocigarettescarton.com>, <marlborocheapcigarettes.com>, and <marlborocigarettesbuy.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 4, 2012
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