Philip Morris USA INC. v. Muhammad Faisal
Claim Number: FA1706001737748
Complainant is Philip Morris USA INC. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Muhammad Faisal (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlborocouponz.us>, <malborocoup.us>, <marlboorocoupon.us>, <marlborogiveaway.us>, and <marlbroocigars.us>, registered with NameCheap, 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 Forum electronically on June 28, 2017; the Forum received payment on June 28, 2017.
On June 28, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlborocouponz.us>, <malborocoup.us>, <marlboorocoupon.us>, <marlborogiveaway.us>, and <marlbroocigars.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 June 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@marlborocouponz.us, postmaster@malborocoup.us, postmaster@marlboorocoupon.us, postmaster@marlborogiveaway.us, postmaster@marlbroocigars.us. Also on June 29, 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 July 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Philip Morris USA Inc. (“PM USA” or “Complainant”) is the owner of numerous trademark registrations within the United States. Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this matter consist of the word “Marlboro,” as shown in the Complaint and attached exhibits.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: Rule 3(c)(ix).
PM USA has spent substantial time, effort, and money advertising and promoting the MARLBORO® Trademarks throughout the United States, and 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 WIPO administrative panels already have determined that the MARLBORO® Trademarks are famous. See, Philip Morris USA Inc. v. ICS Inc., D2013-1306 (WIPO Sept. 17, 2013) (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”.); Philip Morris USA Inc. PrivacyProtect.org / Paundrayana W, D2012-0660 (WIPO May 15, 2012) (“Respondent creates a likelihood of confusion with Complainant’s famous trademark and deprives Complainant from offering its products to prospective clients”); Philip Morris USA Inc. v. Pieropan, D2011-1735 (WIPO 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., D2009-1263 (WIPO Nov. 9, 2009) (noting the “worldwide renown” of the MARLBORO® Trademarks); and Philip Morris USA Inc. v. Prophet Partners Inc., D2007-1614 (WIPO Feb. 8, 2008) (recognizing the fame of the MARLBORO® Trademarks).
PM USA has valuable trademark rights in its MARLBORO® Trademarks, as described above, and uses these trademarks in connection with several variations of MARLBORO® brand cigarettes.
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 access to information regarding PM USA, MARLBORO® products, and special offers to age-verified adult smokers 21 years of age or older. In addition, PM USA owns the domain name registration for <marlboro.net>.
PM USA’s registrations for certain of the MARLBORO® Trademarks establish that it has rights in these marks under ¶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 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.”)
[a.] The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights usTLD Rule 3(c)(ix)(1); usTLD Policy ¶4(a)(i).:
By virtue of its federal trademark and service mark registrations as shown in Exhibit A, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of Respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether Complainant has registered its trademark in the country in which Respondent resides, only that it can establish rights in some jurisdiction). See also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (Forum Apr. 14, 2006).
When comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademark. See Tropar Mfg. Co. v. TSB, FA 0127701 (Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark) See also La-Z-Boy Incorporated v. Mohammed Iqbal, FA 1355601 (Forum Dec. 21, 2010) (finding that “Respondent’s <la-z-boy.us> domain name is identical to Complainant’s LA-Z-BOY mark and Respondent fully incorporates this mark in the disputed domain name and then merely attaches the country-code top-level domain (“ccTLD”) “.us” to its mark. Affixing a ccTLD to a mark does not sufficiently distinguish a domain name from the mark.”)
In creating the Disputed Domain Names <malborocoup.us>, <marlboorocoupon.us>, <marlbroocigars.us>, <marlborogiveaway.us>, and <marlborocouponz.us>, Respondent has added the generic term “coup”, “coupon”, “cigars”, “giveaway”, or “couponz” to the end of Complainant’s MARLBORO® trademark or a deliberately misspelled version of Complainant’s MARLBORO® trademark. The fact that such terms are closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Names and Complainant’s trademark. More specifically:
· “coup” – An abbreviation of “coupon”. Complainant provides coupons to age-verified adult smokers 21 years of age or older who have signed up to receive communications from Complainant. Also, the MARLBORO® coupons provided by Complainant state that they “cannot be transferred, sold or reproduced and that any other use would constitute fraud.”
· “couponz” – Complainant provides coupons to age-verified adult smokers 21 years of age or older who have signed up to receive communications from Complainant. Also, the MARLBORO® coupons provided by Complainant state that they “cannot be transferred, sold or reproduced and that any other use would constitute fraud.”
· “couponz” – Complainant provides coupons to age-verified adult smokers 21 years of age or older who have signed up to receive communications from Complainant. Also, the MARLBORO® coupons provided by Complainant state that they “cannot be transferred, sold or reproduced and that any other use would constitute fraud.”
· “cigars” – Complainant is a tobacco company and, under different brands, manufactures cigarettes, cigars, and related products for use by age-verified adult smokers 21 years of age or older.
· “giveaway” – Complainant regularly offers promotional giveaways to age-verified adult smokers 21 years of age or older.
Past Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark or differs from Complainant’s trademark by just one letter, with the addition of a generic term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks. See Exxon Mobil Corporation v. mga enterprises limited, FA 1273445 (Forum Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark). See also Allianz of Am. Corp. v. Bond, FA 0680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business…did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark). See also Kohler Co. v. Curley, FA 0890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained Complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business”). See also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes does not render respondent’s domain name less confusingly similar to the core trademark held by Complainant). In other words, Respondent’s registration of a domain name that is a minor misspelling of Complainant’s trademark constitutes typosquatting and thus creates a domain name that is confusingly similar to Complainant’s trademark.
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons usTLD Rule 3(c)(ix)(2); usTLD Policy ¶4(a)(ii).:
The granting of registrations by the United States Patent and Trademark Office (USPTO) to Complainant for the MARLBORO® trademark is prima facie evidence of the validity of the term “MARLBORO” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the MARLBORO® trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii). Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Names. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “Muhammad Faisal,” which does not resemble the Disputed Domain Names in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Names, suggests that Respondent is commonly known by the Disputed Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Names within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that Respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (Forum July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Respondent is using the Disputed Domain Names to redirect internet users to websites that resolve to blank pages and lack content. Respondent has failed to make use of the Disputed Domain Names’ websites and has not demonstrated any attempt to make legitimate use of the domain names and websites, which evinces a lack of rights or legitimate interests in the Disputed Domain Names, as confirmed by numerous past Panels. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (Forum Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name). See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Respondent registered the Disputed Domain Names between March 25 and April 5, 2017, which is significantly after Complainant filed for registration of its MARLBORO® trademark with the USPTO, and also significantly after Complainant’s first use in commerce of its trademark in 1883.
Respondent registered the Disputed Domain Names between March 25 and April 5, 2017, which is significantly after Complainant’s registration of its <marlboro.com> domain name on March 6, 2000.
[c.] The domain names should be considered as having been registered and being used in bad faith for the following reasons usTLD Rule 3(c)(ix)(3); usTLD Policy ¶4(a)(iii).:
Complainant and its MARLBORO® trademark are well-known, with numerous USPTO trademark registrations. Complainant has marketed and sold its goods using this trademark since 1883, which is well before Respondent’s registration of the Disputed Domain Names between March 25 and April 5, 2017.
By registering domain names that contain Complainant’s exact MARLBORO® trademark or a typographical error of Complainant’s MARLBORO® trademark with the addition of the generic term “coup”, “coupon”, “cigars”, “giveaway”, or “couponz”, Respondent has created domain names that are confusingly similar to Complainant’s trademark in bad faith. In addition, Respondent has been involved in and lost three prior UDRP cases involving the MARLBORO® brand. One of the cases was a usDRP concerning the names <marlborofreecoupon.us> and <marlboropromo.us>. Both names were similar in meaning and appearance to the disputed domain names. See Philip Morris USA, Inc. v. Muhammad Faisal, FA 1731169 (Forum June 6, 2017); see also Philip Morris USA Inc. v. Muhammad Faisal, D2016-0621 (WIPO June 3, 2016); see also Philip Morris USA Inc. v. Muhammad Faisal, FA 1649579 (Forum Dec. 23, 2015) As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000- 0003 (WIPO Feb. 18, 2000). Stated differently, MARLBORO® is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Names differ from Complainant’s MARLBORO® trademark by just one letter, with the addition of the generic terms “coup”, “coupon”, “cigars”, “giveaway” and “couponz”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007).
The Disputed Domain Names currently resolve to inactive sites and are not being used, though past Panels have noted that the word bad faith "use" in the context of ¶4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith"). See also Alitalia-Linee Aeree Italiane v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose). See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”). In this case, the Disputed Domain Names are confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Names, factors which should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). See also Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Disputed Domain Names can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Names, and thus, the Disputed Domain Names must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Names are an exact match or differ from Complainant’s MARLBORO® trademark by just one letter with the addition of the generic term “coup”, “coupon”, “cigars”, “giveaway”, or “couponz”, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Names, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (Forum May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Names whatsoever, whether actual or theoretical, would have to be in bad faith. See Indymac Bank v. Ebeyer, FA 0175292 (Forum Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
Previous Panels have concluded that evidence of prior Panel decisions in which domain names have been transferred away from Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting.” See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) where Respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of Complainants). See also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against Respondent to find that “this is part of a pattern of such registrations”). See also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 0814312 (Forum Nov. 29, 2006). Respondent here has previously been involved in the below-listed cases, including three prior UDRP cases involving the MARLBORO® brand, which provides evidence of the pattern of cybersquatting in which Respondent is engaging.
· Phillip Morris USA, Inc. v. Muhammad Faisal, FA 1731169 (Forum June 6, 2017)
· Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Faisal, D2016-1935 (WIPO Nov. 9, 2016)
· American Dairy Queen Corporation v. Muhammad Faisal, FA 1673209 (Forum June 11, 2016)
· Philip Morris USA Inc. v. Muhammad Faisal, D2016-0621 (WIPO June 3, 2016)
· Philip Morris USA Inc. v. MUHAMMAD FAISAL, FA 1649579 (Forum Dec. 23, 2015)
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., D2014- 1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the 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 or 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 transferring or cancelling 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 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 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 first prong of Policy ¶4(a)(i) requires a complainant demonstrate its rights in a trademark. Complainant registered the MARLBORO mark—used in the tobacco industry—with the United States Patent and Trademark Office (“USPTO”) (Reg. 68,502, registered April 14, 1908). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant has adequately established its rights in the MARLBORO mark under Policy ¶4(a)(i).
The second component of Policy ¶4(a)(i) requires the disputed domain names be identical or confusingly similar to the mark at issue. The disputed domain names are confusingly similar to its MARLBORO mark because they are composed entirely of the mark, with the addition of generic terms such as “coup,” “coupon,” “cigars,” “giveaway,” “couponz,” and a ccTLD, “.us”. Respondent appears to attempt to distinguish some of the domain names from the MARLBORO mark by simple misspellings. None of these aspects of the domain names sufficiently distinguishes the disputed domain names from Complainant’s MARLBORO mark. The addition of descriptive words—especially those related to a complainant’s corporate activities—fails to sufficiently distinguish domain names from registered marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶4(a)(i).). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. 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). Slightly misspelling a mark cannot distinguish a domain name incorporating that mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). The changes and additions made to Complainant’s MARLBORO mark in the <marlborocouponz.us>, <malborocoup.us>, <marlboorocoupon.us>, <marlborogiveaway.us>, and <marlbroocigars.us> domain names do not adequately differentiate Complainant’s mark from the domain names for the purposes of 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 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 claims Respondent has no rights or legitimate interests in the disputed domain names as required by Policy ¶4(a)(ii). Complainant has neither authorized nor licensed Respondent to use the MARLBORO mark. Respondent is not commonly known by any of the disputed domain names within the meaning of Policy ¶4(c)(ii). Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that Respondent was not commonly known by the <guardair.com> domain name according to Policy ¶4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information concerning all of the disputed domain names identifies “Muhammad Faisal” as the registrant, which bears no obvious relationship to the disputed domain names. The Panel must conclude Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the disputed domain names pursuant to Policy ¶4(c)(ii).
There is no evidence suggesting Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)).
Complainant claims Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is passively holding the disputed domain names. Failure to make an active use of a domain name generally demonstrates a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). The disputed domain names all resolve to error messages instead of websites. There is no suggestion Respondent is using the domain names for other purposes (such as for email or ecommerce purposes). The Panel must conclude Respondent is passively holding the disputed domain names rather than using them for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith registration and use and therefore the disputed domain names were registered and are being used in bad faith. This Panel disagrees, while recognizing there is authority to the contrary. See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶4(b)(ii). Therefore the Panel finds bad faith under the provision.”). There is nothing in the record which demonstrates Complainant has been prevented from obtaining a domain name which reflects its mark (to the contrary, Complainant has registered <marlboro.com>. This indispensable element of Policy ¶4(b)(ii) has not been met.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). Respondent’s previous UDRP proceedings involving the same MARLBORO mark is rather conclusive evidence Respondent had actual knowledge of Complainant’s rights in the mark. Actual knowledge is sufficient to support a finding of 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.”). Under the facts of this case, the Panel must find Respondent registered and is using the disputed domain names in bad faith.
Complainant claims Respondent is passively holding the disputed domain names. When a domain name only resolves to an error message, the Panel may infer bad faith registration and use pursuant to Policy ¶4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because Respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” Respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii)). The disputed domain names all resolve to error messages instead of websites. Therefore, Respondent registered and uses the disputed domain names in bad faith.
Complainant claims Respondent’s use of the disputed domain names creates an initial interest confusion and urges the Panel to conclude Respondent registered, or is using, the disputed domain names in bad faith. When a mark is obviously connected with Complainant or Complainant’s products, Respondent’s use of a disputed domain name fully incorporating that mark creates an initial interest confusion (as it does in this case). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” it’s very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant has used the MARLBORO mark in conjunction with its manufacturing and distribution of tobacco products since at least 1908. Respondent’s use of the disputed domain names containing Complainant’s mark creates an initial interest confusion and constitutes bad faith under Policy ¶4(b)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <marlborocouponz.us>, <malborocoup.us>, <marlboorocoupon.us>, <marlborogiveaway.us>, and <marlbroocigars.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 31, 2017
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