Philip Morris USA Inc. v ISAAC GOLDSTEIN
Claim Number: FA1401001539350
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is ISAAC GOLDSTEIN (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrlboro.com>, registered with Sipence, Inc.
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 January 15, 2014; the National Arbitration Forum received payment on January 16, 2014.
On January 15, 2014, Sipence, Inc. confirmed by e-mail to the National Arbitration Forum that the <mrlboro.com> domain name is registered with Sipence, Inc. and that Respondent is the current registrant of the name. Sipence, Inc. has verified that Respondent is bound by the Sipence, 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 January 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2014 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@mrlboro.com. Also on January 17, 2014, 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 February 14, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
PM USA Has Exclusive Rights in the MARLBORO® Trademarks.
1. 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 products.
2. 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:
MARLBORO® 68,502 Apr. 14, 1908 Cigarettes
MARLBORO® and Roof Design 938,510 July 25, 1972 Cigarettes
3. 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.
4. PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States. 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. ICS Inc., WIPO Case No. D2013-1306 (Sept. 17, 2013) (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”.); Philip Morris USA Inc. v. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 (May 15, 2012) (“Respondent creates a likelihood of confusion with the Complainant’s famous trademark and deprives the Complainant from offering its products to prospective clients”); Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (Dec. 2, 2011) (“finding that the Trademark [MARLBORO®] is a well-known trademark worldwide as held by many other panels”); 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”). See also Philip Morris USA, Inc. v. Bertin Joy Lora, NAF Claim No. FA1009001345193 (October 19, 2010); Philip Morris USA, Inc. v. Li Xiaodong, NAF Claim No. FA1106001394973 (July 25, 2011).
5. 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 and its MARLBORO® products.
Respondent Improperly Registered and Is Improperly Using the Infringing Domain Name.
6. Respondent has registered the domain name “mrlboro.com.”
7. The domain name at issue resolves to a website located at www.mrlboro.com (the “Infringing Website”), which is, at times, either a directory site or a blank screen. The directory site to which mrlboro.com points displays numerous links to other websites, including a link with information on and products for smoking cessation -- a category overlapping with the information that PM USA provides on its own MARLBORO® Website. Other links on Respondent’s Infringing Website pertain to unrelated issues; these may change from time to time.
8. Upon information and belief, Respondent’s bad faith registration and use of the Infringing Domain Name is part of a pattern of such bad faith registration and use of domain names incorporating famous trademarks by Respondent.
9. Specifically, twelve panels in UDRP proceedings brought against Respondent within this Forum -- including an earlier case brought by Complainant PM USA -- have ordered transfer of the domain name or domain names at issue in those proceedings. See Wells Fargo & Co. v. Isaac Goldstein, NAF Claim No. 1321448 (June 9, 2010) (transferring wwwwellsfargo.com); Zevez, Inc. v. Isaac Goldstein, NAF Claim No. 1323005 (June 15, 2010) (transferring zevex.com); Gedex. v. Isaac Goldstein, NAF Claim No. 1332191 (Aug. 11, 2010) (transferring gedex.com); Fandango, Inc. v. Isaac Goldstein, NAF Claim No. 1333483 (Aug. 11, 2010) (transferring fandagos.com); Wells Fargo & Co. v. Isaac Goldstein, NAF Claim No. 1360860 (Jan. 10, 2011) (transferring wellsfargocareers.com and wellsfargodealerservices.com); DBD, Inc.. v. Isaac Goldstein, NAF Claim No. 1373095 (March 23, 2011) (transferring davidsbridaldirect.com); Weebly Inc. v. Isaac Goldstein, NAF Claim No. 1385237 (May 20, 2011) (transferring weebly.co); Vanguard Trademark Holdings USA LLC. v. Isaac Goldstein, NAF Claim No. 1394074 (July 18, 2011) (transferring alamopark.com); Redstone Federal Credit Union v. Isaac Goldstein, NAF Claim No. FA1208001456282 (September 6. 2012) (transferring redfcu.com); Philip Morris USA Inc. v. Isaac Goldstein, NAF Claim No. FA1209001464831 (November 2, 2012) (transferring marlboromiles.com); Capital One Financial Corp. v. Isaac Goldstein, NAF Claim No. FA1301001478884 (February 6, 2013) (transferring sharebuilder.com); and Brooks Brothers Group, Inc. v. Isaac Goldstein, NAF Claim No. 130300148828 (April 12, 2013) (transferring wwwbrooksbrothers.com).
GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
The Infringing Domain Name Is Identical or Confusingly Similar to the MARLBORO® Trademarks.
10. 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.
11. 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.”).
12. The Infringing Domain Name is confusingly similar to the MARLBORO® Trademarks. Courts and administrative panels have long recognized that consumers expect domain names incorporating a company’s name or mark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) (“A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name. . . . A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.”) (internal citations omitted); see also Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, at §C (Nov. 25, 2002).
13. 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., “MRLBORO”, which omits the “a” between the letters ”m” and “r”. The second level domain name, MRLBORO, 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 the MARLBORO® trademark and ordered the domain name transferred. Philip Morris USA Inc. v. Juraj Svancara, NAF Claim No. FA1310001522215 (November 11, 2013) (Respondent’s domain names malboro.org and malboro.info omitted the letter “r” from the MARLBORO Mark. Panel finds “the malboro.info and malboro.org domain names are confusingly similar to the MARLBORO mark”).
14. See also Anheuser-Busch, LLC v. Above.com Domain Privacy, NAF Claim No. FA1202001428309 (March 16, 2012) (finding the budweisr.com domain name confusingly similar to the BUDWEISER® mark and stating “removing the letter ‘e,’ and adding the generic top-level domain ‘.com’ do not suffice to distinguish the domain name from the BUDWEISER® mark”); 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. . . . 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.”); Myspace, Inc. v. Kang, NAF Claim No. FA 672160 (June 19, 2006) (finding that the myspce.com domain name was confusingly similar to the complainant’s MYSPACE® mark and the slight difference in spelling did not reduce the confusing similarity). Indeed, the panel in RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190 (January 11, 2006) referred to intentional misspellings as “typosquatting”, which “has consistently been regarded as creating domain names confusingly similar to the relevant mark.”
15. As previous panels have found, the addition of “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., AARC, Inc. v. Doug Petrie, NAF Claim No. 1069923 (Oct. 16, 2007).
16. In addition to traditional likelihood of confusion, the registration and use of the domain name mrlboro.com creates a form of initial interest confusion, which attracts Internet users to Respondent’s domain name based on Respondent’s use of the MARLBORO® Trademarks. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998) (“A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name. . . . A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.”) (internal citations omitted).
17. Internet users desiring to learn more information about MARLBORO® products may inadvertently type the “mrlboro.com” domain name into the address bar of his or her web browser, only to be misdirected, and confused at not having reached an official MARLBORO® website. Accordingly, Respondent is taking advantage of the Internet user’s behavior pattern identified in Panavision for its own commercial advantage and to further its scheme to sell the Infringing Domain Name for profit. 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); Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166, at ¶6 (Apr. 8, 2002).
Respondent Has No Legitimate Interests or Rights in the Infringing Domain Name.
18. Respondent has no rights or legitimate interest in the Infringing Domain Name. 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. 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.
19. Respondent’s misappropriation of the MARLBORO® Trademarks by use of the term “Mrlboro” -- which is a misspelling of the MARLBORO® trademark -- as the prominent portion of the Infringing Domain Name is no accident. Clearly, Respondent chose to use this trademark to capitalize on the association of the MARLBORO® Trademarks with PM USA’s tobacco products. 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.
20. To the extent that the Infringing Domain Name points to a blank page, Respondent does not have legitimate rights in that domain name. See Kapersky Labzaor v. Waldemar Reiswich, FA: 100600132775 (July 6, 2010) (“Complainant provides evidence that the disputed domain name resolves to a website that is blank except for the message ‘Forbidden. You don’t have permission to access / on this server.’ The Panel finds Respondent has failed to make active use of the <kaspersky.mobi> domain name. Accordingly, the Panel finds the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii).”).
21. In addition, upon information and belief, Respondent derives or has derived revenue from the Infringing Website through commercial pay-per-click web pages containing hyperlinks for third-party websites. Upon information and belief, Respondent included these links in an attempt to trade on the goodwill of PM USA and the MARLBORO® Trademarks. Such misappropriation of the MARLBORO® Trademarks for use in connection with click-through links does not give rise to a right or legitimate interest but, as detailed below, portends Respondent’s bad faith under the Policy. See, e.g., Zee TV USA, Inc. v. Siddiqi, NAF Claim No. 721969 (July 18, 2006) (finding that the respondent engaged in bad faith by registering and using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services related to the complainant’s); MasterCard Int’l Inc. v. Cancel, WIPO Case No. D2007-1121 (Aug. 31, 2007) (“UDRP panels have consistently found that . . . receiving click-through revenue by directing visitors to other websites constitutes bad faith.”).
Respondent Has Registered and Is Using the Infringing Domain Name in Bad Faith.
Respondent Has Registered the Infringing Domain Name in Bad Faith.
22. Respondent has registered the Infringing Domain Name in bad faith by doing so with knowledge of Complainant’s rights in the MARLBORO® Trademarks. See Societe AIR FRANCE v. Geiser Enterprises, WIPO Case No. D2008-0024 (Feb. 29, 2008) (“Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy.”).
23. Respondent had prior knowledge of Complainant’s rights in the MARLBORO® trademark. After issuance of a previous decision involving the Respondent and the MARLBORO® trademark, Respondent, according to the WhoIs record, registered the Infringing Domain Name on July 29, 2013. See Philip Morris USA Inc. v. Isaac Goldstein, NAF Claim No. FA1209001464831 (November 2, 2012) (transferring marlboromiles.com).
24. Given the fame of the MARLBORO® Trademarks, it is simply inconceivable that Respondent was unaware of PM USA’s rights when it registered the Infringing Domain Name. See 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”); 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”). 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 respondent,” such as the Respondent here, “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).
25. 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. Respondent is thus deemed to have constructive notice of PM USA’s trademark rights by virtue of PM USA’s federal registrations for those of the MARLBORO® Trademarks listed in Paragraph 9. See 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 and logo demonstrated an awareness of the complainant’s mark).
Respondent Is Using the Infringing Domain Name in Bad Faith.
26. Respondent’s use of the Infringing Domain Name, upon information and belief in association with pay-per-click links to websites containing either information related to the types of products and information PM USA offers on its MARLBORO® Website, or for other unrelated products or information, demonstrates Respondent’s bad faith. See, e.g., Google v. Zhou Murong, Claim Number: FA1108001403692 (Sept. 30, 2011) (“All of the disputed domain names have been previously found to be confusingly similar to Complainant’s GOOGLE mark. Respondent is using these confusingly similar disputed domain names to resolve to websites featuring hyperlinks to unrelated third-parties from whom Respondent likely receives click-through fees. As Internet users will likely access the resolving websites because they are confused as to Complainant’s affiliation with the websites, the Panel determines that Respondent’s attempt to profit from that confusion constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Philadelphia Health & Educ. Corp. v. Ehrlich, WIPO Case No. D2006-0118 (Apr. 3, 2006) (“Indeed, collecting linking fees or ‘click through’ advertising revenue by using a domain name that incorporates Complainant’s name and mark in an attempt to divert Internet traffic is evidence of bad faith use of a domain name, which can not [sic] establish legitimate interest.”).
27. To the same effect, Respondent’s use of the Infringing Domain Name to point to a blank webpage demonstrates bad faith. See State Farm Automobile Ins. Co. v. Nubian London, Claim No. FA 0706001002765 (July 17, 2007) (“Respondent is using the <statefarmwebquotes.com> domain name to redirect Internet users to a website merely indicating that the domain name is reserved. This non-use of the disputed domain name is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii).”)
28. Respondent’s use of a domain name that is confusingly similar to the famous word mark “MARLBORO®” despite being aware of PM USA’s rights in that mark also evidences bad faith. See Wal-Mart Stores, NAF Claim No. FA0708001060854 (Oct. 15, 2007); see also PepsiCo, Inc. v. PEPSI, SRL, and EMS Computer Indus., WIPO Case No. D2003-0696 (Oct. 28, 2003) (bad faith exists where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.")
29. Further, as described in Paragraph 17 above, Respondent has engaged in a pattern of bad faith registration and use of domain names that incorporate famous trademarks, including, among others, MARLBORO®, WELLS FARGO® and DAVIDS BRIDAL®, which names he has been ordered to transfer to the rightful trademark owners. It is well settled that such a pattern of conduct is evidence of Respondent’s bad faith here. See AOL, Inc. v. Rampe Purda, NAF Claim No. FA1006001330828 (July 29, 2010) (that respondent had been “ordered to transfer the disputed domain names to the respective complainants” in “several previous UDRP cases” was “evidence of Respondent’s bad faith registration and use of the mapquedt.com domain name”).
30. That Respondent’s registration and use of the Infringing Domain Name also creates a form of initial interest confusion is further evidence of Respondent’s bad faith registration and use of the Infringing Domain Name. See, e.g., MBTI Trust, Inc. v. Training Servs. On Demand East c/o Frank Whyte, NAF Claim No. 1290762 (Dec. 1, 2009).
31. Respondent’s use of a domain name that is confusingly similar to the famous word mark MARLBORO® despite being aware of PM USA’s rights in the mark, as described in Paragraphs 31-32 above, is further evidence of Respondent’s bad faith. See AOL, Inc. v. Rampe Purda, supra (that respondent had been “ordered to transfer the disputed domain names to the respective complainants” in “several previous UDRP cases” was “evidence of Respondent’s bad faith registration and use of the mapquedt.com domain name”).
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 to prove each of the following three elements to obtain an order cancelling 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 uses the MARLBORO mark to market its line of cigarettes and related products. Complainant owns rights in the MARLBORO mark under Policy ¶4(a)(i) through its registrations of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 65,502 registered Apr. 14, 1908). A complainant’s registration of its mark with the USPTO is normally sufficient to confer upon complainant rights in the mark pursuant to Policy ¶4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). A complainant does not need to register its mark in the respondent’s country of residence in order to sufficiently establish its rights in the mark under Policy ¶4(a)(i). See, e.g., 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). Complainant’s registration of its MARLBORO mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶4(a)(i).
Complainant claims the <mrlboro.com> domain name is confusingly similar to the MARLBORO mark because the domain name differs from Complainant’s mark only by the deletion of a single letter “a” and the addition of the gTLD “.com.” Adding a gTLD such as “.com” is disregarded for the purposes of conducting confusing similarity analysis under Policy ¶4(a)(i). See, e.g., 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). A domain name is usually confusingly similar to a complainant’s mark where the domain name merely eliminates one letter found in the mark. See, e.g., Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). For the foregoing reasons, the <mrlboro.com> domain name is confusingly similar to Complainant’s MARLBORO mark under 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 never authorized Respondent to use its MARLBORO mark in a domain name. A respondent is not commonly known by a disputed domain name pursuant to Policy ¶4(c)(ii) where the complainant alleges that it has not authorized the respondent to use the appropriated mark in a domain name and nothing in the record, including the WHOIS information, suggests respondent is commonly known by the disputed domain name. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information identifies “ISAAC GOLDSTEIN” as the registrant of the <mrlboro.com> domain name. Neither the WHOIS information nor any other evidence on the record suggests Respondent is commonly known as <mrlboro.com>. The Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims the disputed domain name is not being used 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), because the domain name sometimes resolves to a website promoting numerous links to third-party websites, some of which offer products that directly compete with the cigarette products offered by Complainant under the MARLBORO mark. According to screenshots provided by Complainant, the <mrlboro.com> domain name appears to resolve to a website promoting numerous generic links, including links entitled, “Airline Tickets,” “Employment,” “Ready to Quit Smoking?” and “Quit Smoking With Nicorette,” among others. Sometimes there isn’t a resolving web site. Based upon this information, either the disputed domain name is being used (i) to promote links to a variety of third parties, including third parties that are unrelated to Complainant as well as Nicorette and other third parties that offer nicotine products that directly compete with the cigarette products offered by Complainant under the MARLBORO mark, or (ii) it isn’t being used at all. A respondent’s use of a domain name is not protected under Policy ¶¶4(c)(i) or 4(c)(iii) where the domain name is used to promote links to both competitors of the complainant as well as unrelated third parties. See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent cannot acquire any rights if it isn’t using the domain name at all. See, e.g., U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii).”). The present use of the <mrlboro.com> domain name does not qualify as 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent’s registration and use of the <mrlboro.com> domain name is part of a pattern of bad faith registrations that Respondent has developed, which is demonstrative of Respondent’s bad faith pursuant to Policy ¶4(b)(ii). Twelve previous panels in UDRP proceedings brought against Respondent have ordered the transfer of the domain name at issue in those disputes. See, e.g., Wells Fargo & Co. v. Isaac Goldstein, FA 1321448 (Nat. Arb. Forum Jun. 9, 2010); Zevez, Inc. v. Isaac Goldstein, FA 1323005 (Nat. Arb. Forum Jun. 15, 2010); Gedex. v. Isaac Goldstein, FA 1332191 (Nat. Arb. Forum Aug. 11, 2010). This Panel does not accept those arguments. Each case must be evaluated on its own merits. Respondent has not prevented Complainant from reflecting its mark in a domain name, so Respondent’s actions do not constitute bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent has demonstrated bad faith attraction for commercial gain under Policy ¶4(b)(iv). Specifically, the disputed domain name creates a likelihood of confusion with Complainant’s MARLBORO mark and Respondent is profiting from this confusion in the form of click-through fees. A respondent demonstrates bad faith registration and use of a domain name under Policy ¶4(b)(iv) where there is an obvious connection between the complainant’s mark and the disputed domain name respondent is exploiting for its own commercial profit. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). There is an obvious connection between Complainant’s MARLBORO mark and the disputed <mrlboro.com> domain name because the disputed domain name incorporates the mark in its entirety while merely eliminating the letter “a.” Respondent’s registration and use of the <mrlboro.com> domain name creates a form of initial interest confusion because Internet users desiring to learn more information about MARLBORO products may inadvertently type the <mrlboro.com> domain name into the address bar, only to be misdirected, and likely confused at not having reached an official MARLBORO website. Therefore, this Panel finds the <mrlboro.com> domain name creates a likelihood of confusion with Complainant’s MARLBORO mark. Previous panels have presumed that a respondent is commercially profiting from a disputed domain name where the domain name resolves to a website promoting links to both competing and non-competing third parties. See, e.g., Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant has submitted evidence the disputed domain name promotes a variety of both competing and non-competing third parties. This Panel agrees with the holding in Univ. of Houston Sys., supra, and finds Respondent is commercially profiting from the <mrlboro.com> domain name in the form of click-through fees. Respondent has registered and used the <mrlboro.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).
Finally, Respondent registered and used the <mrlboro.com> domain name in bad faith by doing so with knowledge of Complainant’s rights in the MARLBORO mark. A respondent demonstrates bad faith under Policy ¶4(a)(iii) by registering the disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). A respondent has actual notice of the complainant’s rights where the appropriated trademark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Complainant’s MARLBORO mark is so well-known Respondent’s actual notice of Complainant’s rights in the mark can be inferred. Respondent registered the <mrlboro.com> domain name with actual notice of Complainant’s rights in the MARLBORO mark, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <mrlboro.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, February 21, 2014
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