Philip Morris USA Inc. v. Takashi Yamaguchi
Claim Number: FA1310001527651
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Takashi Yamaguchi (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborocigarettes2012.com>, registered with OnlineNIC, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2013; the National Arbitration Forum received payment on November 1, 2013.
On November 5, 2013, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <marlborocigarettes2012.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 November 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@marlborocigarettes2012.com. Also on November 11, 2013, 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 December 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the MARLBORO mark in connection with its cigarette and tobacco goods and services. Complainant has used the mark for decades in commerce, and has protected the MARLBORO mark through trademark registrations with the United States Patent and Trademark Office ("USPTO").
Respondent has registered the <marlborocigarettes2012.com> domain name, which is confusingly similar to the MARLBORO mark. The addition of the generic top-level domain “.com” is not relevant. The terms of the domain name capitalize on the association of the MARLBORO mark with tobacco products.
Respondent has never been known as the <marlborocigarettes2012.com> domain name. Respondent is not a licensee or permitted user of the MARLBORO trademarks. Respondent uses the <marlborocigarettes2012.com> domain name to obtain advertising revenue through hyperlink advertisements.
Respondent’s bad faith is apparent through its use of the <marlborocigarettes2012.com> domain name to generate advertising revenue via hyperlink advertisements. Respondent is capitalizing on initial interest confusion in using the domain names to lure Internet users. Respondent registered the <marlborocigarettes2012.com> domain name with full knowledge of Complainant’s rights in the MARLBORO mark. Given the fame of the MARLBORO mark it is inconceivable that Respondent lacked actual knowledge of Complainant’s MARLBORO mark.
Respondent registered the <marlborocigarettes2012.com> domain name on May 1, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for MARLBORO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the MARLBORO mark.
Respondent uses the at-issue domain name to attempt to obtain advertising revenue through hyperlink advertisements.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MARLBORO mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its marks where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name contains Complainant’s mark in its entirety, adds the generic descriptive term “cigarettes” plus the year “2012,” and appends the top level domain name “.com” thereto. The resulting differences between Complainant’s trademark and the at-issue domain name fail to distinguish one from the other for the purposes of Policy ¶4(i). In fact the inclusion of the term “cigarettes” in the domain name adds to any confusion between the two since it suggests the kind of products covered by Complainant’s MARLBORO trademark. Therefore, the Panel finds that Respondent’s <marlborocigarettes2012.com> domain name is confusingly similar to Complainant’s MARLBORO mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), (holding that the addition of descriptive or generic terms did not remove a disputed domain name from the realm of confusing similarity); see also, 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).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <marlborocigarettes2012.com> domain name as “Takashi Yamaguchi.” Additionally, there is no evidence that tends to prove that despite the WHOIS information Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <marlborocigarettes2012.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <marlborocigarettes2012.com> domain name to attempt to obtain advertising revenue via hyperlink advertisements. The <marlborocigarettes2012.com> domain name resolves to a website in an Asian language that, at face value without reference to the actual meaning of the text therein, appears to promote various financial and technological services. Respondent’s use of the <marlborocigarettes2012.com> domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding no bona fide offering in the use of a confusingly similar domain name for purposes of promoting a wholly unrelated commercial business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances as well other circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent attempts to capitalize on initial interest confusion between the domain name and Complainant’s trademark. See generally, Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036 (9th Cir. 1999). Respondent uses the at-issue domain name to lure Internet users to Respondent’s website under the pretense that Complainant authorizes, sponsors, or endorses the site. Once on the website, Respondent attempts to exploit the wayward visitors via pay-per-click hyperlinks to third parties. Such conduct demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iv). See, e.g., Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant’s mark, to a gambling website).
Additionally, Respondent clearly had knowledge of Complainant’s MARLBORO mark prior to registering the <marlborocigarettes2012.com> domain name. Respondent’s actual knowledge of Complainant’s trademark is inferred from the notoriety of such mark and from Respondent’s registration and use of a domain name incorporating not only Complainant’s entire trademark but also incorporating the descriptive term “cigarettes” which suggests the type of product covered by the MARLBORO trademark. Respondent’s prior knowledge of the MARLBORO mark shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlborocigarettes2012.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 4, 2013
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