Philip Morris USA Inc. v. Juraj Svancara
Claim Number: FA1310001522215
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Juraj Svancara (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <malboro.info> and <malboro.org>, registered with Gransy, s.r.o. d/b/a subreg.cz.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2013; the National Arbitration Forum received payment on October 4, 2013. The Complaint was submitted in both English and Czech.
On October 2, 2013, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the National Arbitration Forum that the <malboro.info> and <malboro.org> domain names are registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the names. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 October 11, 2013, the Forum served the Czech language Complaint and all Annexes, including a Czech language Written Notice of the Complaint, setting a deadline of October 31, 2013 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@malboro.info, postmaster@malboro.org. Also on October 11, 2013, the Czech language 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 November 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Czech language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
A. PM USA Has Exclusive Rights in the MARLBORO® Trademarks.
PM USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its famous MARLBORO® trademarks. MARLBORO® cigarettes have been made and sold by PM USA (and various predecessor entities) since 1883, with the modern history of the brand beginning in 1955. For many decades, PM USA has used the MARLBORO® trademarks and variations thereof in connection with its tobacco and smoking-related products.
PM USA is the registered owner of the following trademarks (the “MARLBORO® Trademarks”), among others, on the Principal Register of the U.S. Patent and Trademark Office (“PTO”), which are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065:
Trademark Registration No. Date Registered Goods
MARLBORO® 68,502 Apr. 14, 1908 Cigarettes
MARLBORO® and
Roof Design 938,510 July 25, 1972 Cigarettes
Complainant markets its famous MARLBORO® cigarettes to age-verified adult smokers, 21 years of age or older, in various promotional materials including direct mail, MARLBORO® cigarette packs at retail, and online at www.marlboro.com, the official website for the MARLBORO® brand.
PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States. PM USA has thus developed substantial goodwill in the MARLBORO® Trademarks. Through such widespread, extensive efforts, the MARLBORO® Trademarks have become distinctive and are uniquely associated with PM USA and its products. Indeed, numerous administrative panels applying the Policy already have determined that the MARLBORO® Trademarks are famous. See, e.g., Philip Morris USA Inc. v. Isaac Goldstein, NAF Claim No. FA1209001464831 (Nov. 2, 2012) (acknowledging PM USA’s many “longstanding” registrations for the MARLBORO® Trademarks); Philip Morris USA, Inc. v. Li Xiaodong, NAF Claim No. FA1106001394973 (July 25, 2011); Philip Morris USA, Inc. v. Bertin Joy Lora, NAF Claim No. FA1009001345193 (October 19, 2010); see also Philip Morris USA Inc. v. Jimbo Goldsmith-Ireland, WIPO Case No. D2013-0465 (May 14, 2013 (noting the “world-wide notorious nature of the MARLBORO trademark for cigarettes”); Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263 (Nov. 9, 2009) (noting the “worldwide renown” of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (Feb. 8, 2008) (recognizing the fame of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Private, WIPO Case No. D2005-0790 (Nov. 8, 2005) (noting the “longtime use of the MARLBORO trademarks and strength of its brand”); Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245 (May 10, 2005) (stating that PM USA had used the MARLBORO® 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”); Philip Morris USA Inc. v. Dinoia, WIPO Case No. D2005-0171 (Apr. 25, 2005) (“Complainant manufactures, markets and sells cigarettes under the famous MARLBORO® trademarks”); and Philip Morris USA Inc. v. Spinetta, WIPO Case No. D2004-0317 (June 13, 2004) (noting the fame of the MARLBORO® Trademarks).
PM USA has registered the domain name marlboro.com. This domain name points to PM USA’s website, www.marlboro.com (the “MARLBORO® Website”), which enables age-verified adult smokers 21 years of age or older access to information regarding PM USA, MARLBORO® products, and special offers.
B. The Infringing Domain Names Were Improperly Registered and Are Being Improperly Used
Respondent has registered the domain names “malboro.info” and “malboro.org”.
The Infringing Domain Name malboro.info resolves to a directory site that includes links to other sites. Upon information and belief, these are pay-per-click advertisements; for which Respondent, upon information and belief, derives click-through advertising revenue. The advertisements direct Internet users to websites from which they can purchase goods or services of third-parties or derive information.
The Infringing Domain Name malboro.org resolves to a website that states “High Risk Website Blocked”. This website indicates that it is infected with malware or a virus.
Upon information and belief, Respondent has established the Infringing Websites in an attempt to trade on the goodwill of PM USA and the MARLBORO® Trademarks.
On September 30, 2013, PM USA initially filed this complaint. At the time PM USA filed this complaint, the Whois database listed the registrant’s contact information as follows:
Michal Truban, Websupport, s.r.o.
Stare grunty 12
Bratislava
Slovakia 84104
Phone: +421 904306081
Email: helpdesk@websupport.sk
On October 1, 2013, PM USA received an email message from helpdesk@websupport.sk attaching a letter from Michael Truban, Websupport, CEO. That letter stated in part “we are not liable for domain names marlboro.ino and malboro.org and you should contact directly the User. Due to your complaint we updated registry contact data of domains malboro.info and malboro.org so they now correspond with the domain owner’s credentials.” Thereafter, the Whois database indicated the registrant contact information provided above. Thus, based on this correspondence PM USA contends that the Respondent used Websupport as a privacy protection service to mask the Respondent’s true identity.
GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
A. The Infringing Domain Names Are Identical or Confusingly Similar to the MARLBORO® Trademarks.
Through widespread, extensive use in connection with its products, the MARLBORO® Trademarks have become uniquely associated with PM USA and its products, and are well-known and famous throughout the United States.
PM USA’s registrations for the MARLBORO® Trademarks establish that it has rights in these marks under Paragraph 4(a)(i) of the Policy. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) ¶1.1, available at http://www.wipo.int/amc/en/domains/search/overview/index.html#11 (“If the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”); see also Cengage Learning Inc. v. Montagu, NAF Claim No.: 1116919 (Jan. 15, 2008) (a panel will not “second-guess or look behind the registration of a trademark” because “[o]nce the USPTO has made a determination that the mark is registerable . . . an ICANN Panel is not empowered to nor should it disturb that determination.”).
The Infringing Domain Names are confusingly similar to the MARLBORO® Trademarks. The Infringing Domain Names include an obvious and deliberate misspelling of the famous MARLBORO® trademark, i.e., “MALBORO”, which omits the “r” between “”a” and “l”. The second level domain name, MALBORO, is visually and aurally virtually identical to the MARLBORO® mark. In analogous situations, panelists have found a registrant’s domain name to be confusingly similar to a complainant’s trademark and ordered the domain name transferred. See, e.g., Ashley Furniture Industries, Inc. v. ashley furnitures c/o ashley furnitures, Claim No.: FA 1102001374111 (March 25, 2011). (finding confusing similarity and noting “Respondent’s <ashleyfurnitures.org> domain name contains Complainant’s A ASHLEY FURNITURE mark, but Respondent removes the letter “a” and the space from Complainant’s mark. Respondent also adds the letter “s” and the generic top-level domain (“gTLD”) “.org.” In Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) and Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006), the panels determined that the removal of a letter failed to differentiate a disputed domain name from a complainant’s mark.”). See also RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190 (January 11, 2006) (referring to intentional misspellings as “typosquatting”, “has consistently been regarded as creating domain names confusingly similar to the relevant mark.” ordering transfer of domain name to Complainant).
Due to the fame of the MARLBORO® Trademarks, the registrant of the Infringing Domain Names surely knew that the use of the terms “malboro.info” and “malboro.org” would cause confusion among Internet users as to whether PM USA was affiliated with the Infringing Domain Names and its registrants.
And, as previous panels have found, the addition of “.info” or “.org” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See Brainetics, LLC v. lin fs, Claim No. FA 1101001368915 (Feb. 26, 2011) (holding that respondent failed to sufficiently differentiate its disputed domain name from complainant’s mark by adding a descriptive term and the top level domain “.info”; finding confusing similarity under Policy ¶4(a)(i).); Homer TLC, Inc. v. Bessouiket Genamara, Claim No.: FA 1104001385067 (May 24, 2011) (addition of generic top level domain “.org” was “:inconsequential” and did not distinguish domain name at issue from complainant’s trademark).
An Internet user desiring to learn more information about MARLBORO® products may inadvertently type the Infringing Domain Names into the address bar of his or her web browser, only to be misdirected and confused at not having reached an official MARLBORO® website. This type of “initial interest confusion” or diversion of traffic is illegal because the infringer has capitalized wrongfully on a trademark owner’s goodwill in its mark to divert Internet traffic for its own gain. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (“[T]here is . . . initial interest confusion in the sense that, by using ‘moviebuff.com’ or ‘MovieBuff’ to divert people looking for ‘MovieBuff’ to its website, [the infringing party] improperly benefits from the goodwill that the [trademark owner] developed in its mark.”). Furthermore, “the fact that such confusion may be dispelled . . . does not negate the fact of initial confusion . . . .”); Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166, at ¶6 (Apr. 8, 2002).
B. Respondent Has No Legitimate Interests or Rights in the Infringing Domain Name.
Respondent has no rights or legitimate interests in the Infringing Domain Names. Respondent has no connection or affiliation with PM USA, its affiliates, or any of the many products provided by PM USA under the MARLBORO® Trademarks. Upon information and belief, Respondent was never known by any name or trade name that incorporates the word “Marlboro,” and has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof. Indeed, Respondent could never do so because the MARLBORO® Trademarks and the many variations thereof belong exclusively to PM USA in the United States and Respondent’s Infringing Websites, to which the Infringing Domain Names point, are available to the U.S. public. Additionally, Respondent is not a licensee of PM USA and has not obtained permission, either express or implied, from PM USA to use the MARLBORO® Trademarks, or any domain names incorporating such trademarks, either at the time Respondent registered and began using the Infringing Domain Name, or at any time since.
Further, the misappropriation of the MARLBORO® Trademarks by use of the misspelled term “malboro” is no accident. It is well-established that a registrant’s typosquatting manifests its lack of legitimate interest in a domain name. See, e.g., Esurance Ins. Services, Inc. v. Bin G Glu, Claim No.: FA 1006001327841 (July 9, 2010) (“[t]he Panel finds that Respondent’s typosquatting is evidence supporting a finding of Respondent’s lack of rights and legitimate interests according to Policy ¶4(a)(ii).”). Clearly, the Infringing Domain Names were chosen to capitalize on the association of the MARLBORO® Trademarks with PM USA’s tobacco products. As one panel found in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at § 6.2 (Feb. 18, 2000), 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 Respondent could have no legitimate interest in the trademark. In fact, a previous panel commented that it was “inconceivable” for a respondent to have a legitimate use of a domain name incorporating the MARLBORO® Trademarks “given the longtime use of the MARLBORO® trademarks and strength of its brand.” Private, WIPO Case No. D2005-0790. The same is true with respect to the misspelling “malboro.”
Rather, upon information and belief, Respondent selected the Infringing Domain Names to trade on the goodwill associated with PM USA’s MARLBORO® Trademarks. Such misappropriation of the MARLBORO® Trademarks does not give rise to a right or legitimate interest but portends bad faith.
C. Respondent Registered and Is Using the Infringing Domain Name In Bad Faith.
(i) Respondent Registered the Infringing Domain Name in Bad Faith.
Respondent has registered the Infringing Domain Names in bad faith because, upon information and belief as described below, the Infringing Domain Names were registered with full knowledge of PM USA’s rights in the MARLBORO® Trademarks. See Societe AIR FRANCE v. Geiser Enterprises, WIPO Case No. D2008-0024 (Fed. 29, 2008) (“Registrations of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy”).
Given the fame of the MARLBORO® Trademarks, it is simply inconceivable that the Respondent registered the Infringing Domain Names without knowledge of PM USA’s rights. See Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609 (Dec. 26, 2007) (finding that it was “inconceivable” that the respondent “was not aware of the MARLBORO® trademarks”). See also Bloomberg L.P. v. Boo Design Servs., NAF Claim No. 0097043 (May 17, 2001) (stating that “unless living a monastic life, Respondent has been actually aware of Complainant’s registered trademark and service mark”). And, “it has been long established by prior UDRP panels that bad faith registration and use of disputed domain names may be based solely on the worldwide fame of the trademarks or service marks to which those names are confusingly similar” if the registrant “has no connection to the corresponding complainant or its goods or services.” Wal-Mart Stores, Inc. v. James D’Souza, NAF Claim No. FA0708001060854 (Oct. 15, 2007).
In addition, even a simple Internet search would have revealed PM USA’s extensive use of the MARLBORO® Trademarks as source identifiers for its tobacco products. PM USA’s rights in its MARLBORO® Trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the PTO records that are readily accessible online. Indeed, it is well-settled that PM USA’s federal trademark registrations for those of the MARLBORO® Trademarks listed in Paragraph 12 provide constructive notice of PM USA’s trademark rights. See Nokia Corp. v. [Redacted], NAF Claim No. 1220744 (Oct. 2, 2008) (“it appears that Respondent registered [the disputed domain names] with at least constructive knowledge of Complainant’s rights in the NOKIA trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use.”); Am. Online, Inc., NAF Claim No. 117319 (July 30, 2002) (noting that the registration of a mark on the PTO’s Principal Register and respondent’s intentional use of the mark demonstrated an awareness of the complainant’s mark).
Respondent registered the Infringing Domain Names, upon information and belief, to trade on the goodwill of PM USA’s MARLBORO® Trademarks by obtaining revenue from the pay-per-click advertisements displayed on the Infringing Website to which malboro.info points. As previous panels have found, this is evidence of bad faith. E.g., Dr. Martens Int’l Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1191 (Sept. 10, 2011) (“The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainant’s [marks], adopting confusingly similar domain names and using them to host links to third-party websites offering [products for sale]”); CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201 (Mar. 28, 2006) (parked domain named used to generate click-through revenue for registrant was registered and used in bad faith).
(ii) Respondent Is Using the Infringing Domain Names in Bad Faith.
Respondent’s practice of typosquatting -- registering and using obvious misspellings of the MARLBORO® mark -- manifests bad faith. See, e.g., craigslist, Inc. v. Domain Admin/Taranga Services Pty Ltd, Claim No.: FA 1205001445358 (July 5, 2012) (Respondent, who simply removed the letter “g” from “Craiglist” trademark for advertising site to register “craislist.com”, engaged in “prototypical typosquatting behavior”, which was “conclusive evidence of bad faith registration and use”.).
Moreover, as noted above, the registration and use of the Infringing Domain Names creates a form of initial interest confusion, which attracts Internet users to the Infringing Domain Name based on the use of misspellings of the MARLBORO® Trademarks. This is further evidence that the Infringing Domain Names are being used in bad faith. See, e.g., Osuuspankkikeskus OSK v. Registerfly.com, WIPO Case No. D2006-0461 (June 13, 2006) (referencing initial interest confusion in the panel’s finding of bad faith registration and use); see also MBTI Trust, Inc. v. Training Servs. On Demand East c/o Frank Whyte, NAF Claim No. FA0910001290762 (Dec. 1, 2009) (same).
This conclusion is bolstered by the display of pay-per-click advertisements on the Infringing Website malboro.info. E.g., Dr. Martens Int’l Trading GmbH, WIPO Case No. D2011-1191; CPP, Inc., WIPO Case No. D2006-0201.
Moreover, the fact that the actual registrant of the Infringing Domain Names used a masking service to mask the actual registrant’s true identity is a further indication of both bad faith registration and use under the Policy. See Yahoo! Inc. v. cancelyahoo.org Private Registrant/ A Happy DreamHost Customer, NAF Claim No. 1503412 (Jul. 29, 2013) (“Finally, Respondent used a privacy service to register the disputed domain name . . . which raised the rebuttable presumption of bad faith registration and use of the disputed domain name”); Deb Shops, Inc. & D.B. Royalty, Inc. v. MS and Debs Place, NAF Claim. No. 1239510 (Feb. 17, 2009) (“Respondents listed their e-mail address as ‘S, M ubersexual@gmail.com,’ their telephone as a nonworking number, and their address as the nonexistent place of ‘Mole, Ohio, Ohio, 90201.’ Respondent’s provision of inaccurate and fictitious registration information is evidence of their bad faith.”).
Respondent must have expected that any use of the Infringing Domain Names would cause harm to PM USA. The Infringing Domain Names are so “obviously indicative” of PM USA’s products that use of the domain names would “inevitably lead to confusion of some sort.” AT&T v. Rice, WIPO Case No. D2000-1276, at ¶6 (Nov. 25, 2000). Indeed, the misappropriation of PM USA’s MARLBORO® mark by the registrants evidences bad faith. See also Kraft Foods, Inc. v. Unknow, WIPO Case No. D2005-1153 (Jan. 1, 2006) (internal quotation marks omitted) (“when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests opportunistic bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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 claims it has long used the MARLBORO mark to promote tobacco products, namely cigarettes. Complainant has sold cigarettes under the MARLBORO mark since 1883, and has held multiple United States Patent & Trademark Office (“USPTO”) trademark registrations for the mark for many years. See, e.g., Reg. No. 68,502 registered on April 14, 1908. Complainant has adequately shown its Policy ¶4(a)(i) rights in the MARLBORO mark through USPTO registration, regardless of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims Respondent has registered the infringing <malboro.info> and <malboro.org> domain names. Both domain names omit the “r” from the MARLBORO mark, and affix the gTLDs “.info” or “.org.” When examining a disputed domain name for confusing similarity to a mark, the syntactically required gTLD and ccTLD must be disregarded. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). To hold otherwise would eviscerate the UDRP. In the case of Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel determined there is confusing similarity when the domain name’s substance varies from the complainant’s mark by a single character. Under the facts of this case, this Panel agrees with that conclusion. The <malboro.info> and <malboro.org> domain names are confusingly similar to the MARLBORO mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has never been known by these domain names. Complainant has not licensed or authorized Respondent to use derivatives of its MARLBORO mark. The WHOIS information now lists “Juraj Svancara” as registrant of the domain names. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel agreed when there was no evidence to connect the respondent with the domain names, respondent’s burden under Policy ¶4(c)(ii) is not satisfied. This Panel agrees and finds Respondent is not known by either the <malboro.info> or the <malboro.org> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <malboro.info> domain name to promote a directory website that links Internet users to sponsored content. The <malboro.info> domain name resolves to a web directory with hyperlinks to various offers such as “tobacco online,” “Duty free cigarettes,” MARLBORO COUPONS BY MAIL,” and “GET TONS OF FREE SAMPLES” are presented to visiting Internet users. In the case of United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel found offering various hyperlink promotions, including hyperlinks to competing goods, was not a Policy ¶4(c)(i) bona fide offering of goods or services and a Policy ¶4(c)(iii) legitimate noncommercial or fair use. This Panel agrees and finds Respondent has failed to make a Policy ¶4(c)(i) bona fide offering, or Policy ¶4(c)(iii) legitimate noncommercial or fair use.
Complainant claims attempting to access the <malboro.org> domain name’s website results in a “High Risk” warning and the site being blocked by Complainant’s malware and virus protection software. Specifically, access to the domain name’s website was blocked as “the threat Mal/HTMLGen-A has been found on this website”. Dissemination of the hazardous file/program “Mal/HTMLGen-A” is not a bona fide use under Policy ¶4(c)(i), nor a legitimately noncommercial or fair under Policy ¶4(c)(iii). See, e.g., Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”).
Complainant claims Respondent is typosquatting both the <malboro.info> and <malboro.org> domain names. Once again, this Panel must disagree. Typosquatting is not a ground for finding a Respondent has no rights to a domain name under the UDRP. Something more is required than such a conclusory statement.
Finally, Respondent used a privacy service to register both of the domain names. This means Respondent’s identity was not released until this UDRP proceeding was brought. Therefore, Respondent has acquired no rights or legitimate interests to the domain names while its identity was concealed.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <malboro.info> domain name to capitalize on the likelihood Internet users will click on the monetized hyperlinks promoted on the domain name’s website. The <malboro.info> domain name’s resolving website contains an array of competing and unrelated hyperlink advertisements. Respondent’s use of the <malboro.info> domain name is a textbook example of the appropriation of a confusingly similar domain name to create commercial gain through advertising revenue. Respondent creates a likelihood Internet users will be confused about the source or origin of the offerings on the <malboro.info> domain name’s website, all of which constitutes bad faith under Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims there is a likelihood confused Internet users will click through on to the unsafe files and downloadables present on the <malboro.org> domain name believing this domain name is associated with, or endorsed by, Complainant. The warning message Complainant sees when attempting to access the domain name’s website may not be seen by all users, raising the risk of infection. While Respondent’s commercial gain in this regard is not clear (and may depend upon the nature and function of the malicious software), bad faith is present in the deliberate propagation of malicious software. In Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010), the panel found Policy ¶4(a)(iii) bad faith when a domain name was used to facilitate the release of malicious software. Respondent’s decision to host files such as “Mal/HTMLGen-A” on the <malboro.org> domain name illustrates Policy ¶4(a)(iii) bad faith on Respondent’s part.
Respondent registered the disputed domain names using a privacy service. This Panel has repeatedly found such a registration raises a rebuttable presumption of bad faith registration and use in the commercial context. Respondent has failed to rebut this presumption. This fact alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <malboro.info> and <malboro.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 11, 2013
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