Philip Morris USA Inc. v. Marco Bosch
Claim Number: FA1401001541088
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is Marco Bosch (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboroapp.com>, registered with Ascio Technologies, Inc. - Denmark.
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.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2014; the National Arbitration Forum received payment on January 28, 2014.
On February 4, 2014, Ascio Technologies, Inc. - Denmark confirmed by e-mail to the National Arbitration Forum that the <marlboroapp.com> domain name is registered with Ascio Technologies, Inc. - Denmark and that Respondent is the current registrant of the name. Ascio Technologies, Inc. - Denmark has verified that Respondent is bound by the Ascio Technologies, Inc. - Denmark 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 February 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@marlboroapp.com. Also on February 4, 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.
A timely Response was received and determined to be complete on February 19, 2014.
On February 27, an Additional Submission was received from Complainant.
On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has been in business since 1883, with its modern brand beginning in 1955. Complainant operates its own website at <marlboro.com>.
Complainant has rights in the MARLBORO mark, used in connection with the manufacture and sale of cigarettes. Complainant owns registrations for the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502 registered Apr. 14, 1908). Respondent’s <marlboroapp.com> domain name is confusingly similar to Complainant’s MARLBORO mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “app” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <marlboroapp.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MARLBORO mark in any way. By incorporating Complainant’s MARLBORO mark into the <marlboroapp.com> domain name, Respondent is using the disputed domain name to divert Internet users seeking to visit Complainant’s legitimate website. Respondent registered and is using the <marlboroapp.com> domain name in bad faith.
a. The disputed domain name is currently inactive, featuring only a picture of a hand covering a face, a phone number, and no functional links. See Complainant’s Exhibit G.
b. Respondent’s registration and use of the <marlboroapp.com> domain name creates initial interest confusion, which attracts Internet users to Respondent’s website due to Respondent’s use of Complainant’s MARLBORO mark in the domain name.
c. Respondent had knowledge of Complainant’s MARLBORO mark prior to registering the <marlboroapp.com> domain name because Complainant’s mark is well-known.
B. Respondent
Respondent is not using the <marlboroapp.com> domain name for commercial purposes, but only for personal use. Respondent is a fan of Complainant’s product, having used Complainant’s products for 25 years, and believes this fact provides a basis for rights or legitimate interests in the <marlboroapp.com> domain name. Since the initiation of this proceeding, Respondent has changed the domain name to feature several functional links and a picture of his home in Elburg, Netherlands. See Respondent’s Exhibit C.
Respondent has not used the <marlboroapp.com> domain name in bad faith.
Respondent has been approached about the purchase of the disputed domain name by a third party, but Respondent refused to sell.
Respondent has been using the disputed domain name for more than a year and a half, and Complainant’s delay in bringing this proceeding is an important factor.
Respondent is willing to transfer the disputed domain name to Complainant if Complainant agrees to reimburse Respondent for its out-of-pocket costs in the registration, maintenance, and defense of the disputed domain name in this proceeding.
The Panel note that Respondent registered the <marlboroapp.com> domain name on July 24, 2013.
C. Additional Submissions
Complainant filed an Additional Submission on February 27, 2014 in response to Respondents allegations in the answer to the complaint and the Respondent in a letter requested that the complaint be sent in Dutch. All of the allegations are covered in the allegations above.
Respondent has violated ICANN Policy ¶ 4(a)(i) , Policy ¶ 4(a)(ii) and Policy ¶ 4(c)(iii).
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.
Complainant contends it has rights in the MARLBORO mark, used in connection with the manufacture and sale of cigarettes. Complainant states it owns registrations for the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502 registered Apr. 14, 1908). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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 rights in the MARLBORO mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds a valid trademark registration from the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <marlboroapp.com> domain name is confusingly similar to Complainant’s MARLBORO mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “app” and the gTLD “.com.” The Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel also finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 contends that Respondent does not have any rights or legitimate interests in the <marlboroapp.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MARLBORO mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Marco Bosch” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the MARLBORO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <marlboroapp.com> domain name under Policy ¶ 4(c)(ii).
By incorporating Complainant’s MARLBORO mark into the <marlboroapp.com> domain name, Complainant asserts that Respondent is using the disputed domain name to divert Internet users seeking to visit Complainant’s legitimate website. Past panels have found that such practices do not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the disputed domain name to divert Internet users seeking to visit Complainant’s legitimate website.
The Panel may look outside the illustrations of bad faith listed in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Those illustrations are not meant to be an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel finds bad faith under Policy ¶ 4(a)(iii) since the Complainant’s contentions have merit.
Complainant claims Respondent registered and is using the <marlboroapp.com> domain name in bad faith. Complainant contends that the disputed domain name is currently inactive, featuring only a picture of a hand covering a face, a phone number, and no functional links. See Complainant’s Exhibit G. Past panels have found bad faith for failure to make an active use after as little as three months of inactive use after registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Here, the Panel notes that Respondent registered the disputed domain name at least six months prior to this proceeding. Therefore, the Panel finds that Respondent registered and is using the <marlboroapp.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.
Complainant alleges that Respondent’s registration and use of the <marlboroapp.com> domain name creates initial interest confusion, which attracts Internet users to Respondent’s website due to Respondent’s use of Complainant’s MARLBORO mark in the domain name. In Philip Morris USA, Inc., v. Zheng Duo, FA 1519962 (Nat. Arb. Forum Oct. 23, 2013) the panel found that “by using [the] [c]omplainant’s long-standing, famous MARLBORO mark in the <cigarettesmarlborocarton.com> domain name . . . [the] [r]espondent is causing initial interest confusion, thereby demonstrating bad faith under Policy ¶ 4(a)(iii).” Therefore, the Panel finds that Respondent registered and is using the <marlboroapp.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the disputed domain name creates initial interest confusion.
Complainant asserts that Respondent had knowledge of Complainant’s MARLBORO mark prior to registering the <marlboroapp.com> domain name because Complainant’s mark is well-known. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well-aware of Complainant’s mark at the time Respondent registered the disputed domain name.
Therefore, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); 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). In this the Panel notes that the Respondent stated he used Marlboro cigarettes.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboroapp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page