Philip Morris USA Inc. v. Naveen Patnayak
Claim Number: FA1705001731422
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter Kaye Scholer LLP, District of Columbia, USA. Respondent is Naveen Patnayak (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboro-carton.us> and <marlb0r0.us>, registered with NameCheap, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2017; the Forum received payment on May 12, 2017.
On May 12, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlboro-carton.us> and <marlb0r0.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marlboro-carton.us, postmaster@marlb0r0.us. Also on May 15, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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
i) Complainant manufactures and sells cigarettes and registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of that business (e.g. Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s <marlboro-carton.us> and <marlb0r0.us> are confusingly similar to Complainant’s MARLBORO mark. <marlboro-carton.us> is confusingly similar to the MARLBORO mark because it incorporates that mark in its entirety and merely adds a hyphen, a generic term descriptive of Complainant’s products, and the country-code top-level domain (“ccTLD”) “.us”. <marlb0r0.us> is confusingly similar to the MARLBORO mark because it incorporates the mark in its entirety and merely substitutes the “o’s” in the mark for “0’s” in the domain name and adds the ccTLD, “.us”.
ii) Respondent has no rights or legitimate interests in the <marlboro-carton.us> and <marlb0r0.us> domain names. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its MARLBORO mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use. Instead, Respondent is using the disputed domain name to resolve to websites in which Respondent posts content available for download, presumably for Respondent’s commercial gain. Respondent has chosen to use the distinctive MARLBORO mark to capitalize on its fame and create a false association between Respondent and Complainant.
iii) Respondent has registered and is using the <marlboro-carton.us> and <marlb0r0.us> domain names in bad faith. Complainant’s use of the MARLBORO mark precedes Respondent’s registration of its domain names by more than a century and the mark has since developed a notoriety sufficient to find that Respondent had actual knowledge of Complainant’s rights. Furthermore, a simple Internet search would have notified Respondent of Complainant’s rights and therefore Respondent had at least constructive knowledge of Complainant’s rights. The notoriety of Complainant’s mark also creates the expectation that Respondent’s use will harm Complainant. Additionally, Respondent’s obvious misspelling of MARLBORO in the <marlb0r0.us> domain name demonstrates that Respondent engaged in typosquatting. Moreover, Respondent engages in a pattern of registering disputed domain names and has registered two of them in the instant case. Lastly, Respondent attempts to divert Internet users to Respondent’s website to offer illegal material available for users to download.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <marlboro-carton.us> was registered on March 4, 2017, and <marlb0r0.us> was registered on March 24, 2017.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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 asserts that it has established rights in the MARLBORO mark via its registration with the USPTO (e.g. Reg. No. 68,502, registered Apr. 14, 1908). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore the Panel finds that Complainant has established rights in the MARLBORO mark.
Complainant argues that Respondent’s <marlboro-carton.us> is confusingly similar to Complainant’s MARLBORO mark because it incorporates the mark in its entirety and merely appends a hyphen, the descriptive term “carton”, and the ccTLD “.us.” First, the addition of “.us” is inconsequential to the claim of confusing similarity. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Second, the addition of a hyphen does not distinguish the domain name from the mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark") . Third, the addition of a term descriptive of Complainant’s products cannot eliminate confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that Respondent’s <marlboro-carton.us> is confusingly similar to Complainant’s MARLBORO mark in which it has established rights.
Similarly, Complainant argues that Respondent’s <marlb0r0.us> is confusingly similar to Complainant’s MARLBORO mark because it incorporates the mark in its entirety and merely substitutes any letter “O” in the mark for the number “0” in the domain name, along with appending the ccTLD “.us.” Replacing letters with similar looking numbers does not sufficiently distinguish disputed domain names from marks. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). The addition of a ccTLD cannot remove confusing similarity either. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, the Panel finds that Respondent’s <marlb0r0.us> domain name is confusingly similar to Complainant’s MARLBORO mark.
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 (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 (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 insists that Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to use the MARLBORO mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Naveen Patnayak” as the registrant name for both disputed domain names. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the MARLBORO mark can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain names. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel concludes that Respondent is not commonly known by the <marlboro-carton.us> and <marlb0r0.us> domain names.
Complainant contends that Respondent does not use either disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use. Instead, Respondent is using the disputed domains name to resolve to websites upon which Respondent posts content available for download, presumably for Respondent’s commercial gain. Respondent has chosen to use the distinctive MARLBORO mark to capitalize on its fame and create a false association between Respondent and Complainant. Taking advantage of the goodwill surrounding Complainant’s mark by using a domain name confusingly similar to that mark for the purpose of diverting Internet users to an unrelated website is not a bona fide offering of goods or services or legitimate non-commercial or fair use. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Both disputed domain names resolve to websites that offer downloadable content unrelated to Complainant’s business. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use under Policy ¶ 4(c)(i) & (iii).
Complainant asserts that Respondent has engaged in a pattern of bad faith registration and therefore that Respondent has registered the current disputed domain names in bad faith. Respondent’s registration of multiple infringing domain names in a single proceeding is indicative of bad faith registration of those domain names. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent's registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>,<radissonplazahoteltianjin.com>,
and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). The WHOIS information in the record indicates that Respondent indeed registered both disputed domain names. Therefore, the Panel finds that Respondent, who has registered two different disputed domain names in the instant proceeding, has registered the disputed domain names in bad faith.
Complainant insists that Respondent had actual or constructive notice of Complainant’s rights in the MARLBORO mark. While constructive notice is not evidence of bad faith registration and use, finding that a Respondent had actual notice of Complainant’s rights suggests bad faith registration and use. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of
it.”). Complainant argues that the longstanding use of the famous MARLBORO mark suggests that Respondent must have had actual knowledge of Complainant’s mark. Therefore the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark and therefore that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent engaged in typosquatting by using the <marlb0r0.us> domain name. When a domain name is confusingly similar to a mark in such a way that the domain name substitutes letters that are likely to result in typos or misspelling, the Panel finds that Respondent acted in bad faith. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, since <marlb0r0.us> substitutes the similar looking number “0” for the letter “O” and both are in proximity one another on the keyboard, the Panel finds that Respondent engaged in typosquatting, indicating bad faith.
Finally, Complainant argues that Respondent uses the disputed domain names to intentionally attract Internet users to financially benefit by offering illegal downloading services. Respondent’s use of a confusingly similar domain name for financial gain can evince bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Based on the screenshots provided by Complainant of the resolving webpage for the disputed domain names, it appears Respondent does indeed offer media for download. If Complainant accurately alleges that Respondent offers this media content illegally, then that also is indicative of bad faith. See Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). The Panel agrees that Respondent uses the disputed domain names to attract Internet users in bad faith, and further agrees that Respondent engages in the illegal distribution of media content in bad faith as well.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro-carton.us> and <marlb0r0.us> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 12, 2017
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