Philip Morris USA Inc. v. Usama Ramzan
Claim Number: FA1706001737750
Complainant is Philip Morris USA Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Usama Ramzan (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlborocoupon.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2017; the Forum received payment on June 28, 2017.
On June 29, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <marlborocoupon.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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@marlborocoupon.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 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MARLBORO mark to market its tobacco products.
Complainant holds a registration for the MARLBORO trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,365,560, registered January 8, 2008).
Respondent registered the domain name <marlborocoupon.us> on May 9, 2017.
The domain name is confusingly similar to Complainant’s MARLBORO mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use the MARLBORO mark for any purpose.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Respondent uses the domain name to redirect Internet users to a website that resolves to a blank page and lacks any content.
Respondent thus fails to make any active use of the domain name.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name causes confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with it and the resolving website.
Respondent has engaged in a pattern of cybersquatting.
Respondent registered the domain name with knowledge of Complainant’s rights in the MARLBORO mark.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name was registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel may look for guidance to UDRP decisions, as applicable, in rendering its decision in this proceeding.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the MARLBORO trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP Complainant’s USPTO registration for the HAAS mark sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here United Arab Emirates). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <marlborocoupon.us> domain name is confusingly similar to Complainant’s MARLBORO trademark. The domain name contains Complainant’s mark in its entirety, merely adding with the generic term “coupon,” which describes an aspect of complainant’s business, plus the country code Top Level Domain (“ccTLD”) “.us.” The alterations made to the mark in forming the domain name do not save it from the realm of confusing similarity under the standards of the Policy. See Crocs, Inc. v. [Registrant], FA 1043196 (Forum September 2, 2007):
[T]he addition of a ccTLD [to the mark of a UDRP complainant in creating a domain name] is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.
See also Kohler Co. v. Curley, FA 890812 (Forum March 5, 2007) (finding confusing similarity under Policy ¶ 4(a)(i) where the <kohlerbaths.com> domain name contained a UDRP complainant’s entire mark, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, Alaska Air Group, Inc. v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding that a respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and the fact that a UDRP complainant had not licensed or otherwise authorized that respondent to use its mark in a domain name). To the same effect, see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <marlborocoupon.us> domain name to redirect internet users to a website that resolves to a blank page that lacks content, so that Respondent has failed to make any active use of the domain name. In the circumstances here obtaining, Respondent’s failure to make any active use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum September 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The Complaint shows that the <marlborocoupon.us> domain name resolves to a blank site and is not being actively used. Passive holding of a domain name can nonetheless be a factor in finding bad faith registration and use under Policy ¶ 4(a)(iii). See 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 … circumstances even when the registrant has done nothing more than register the [domain] names.
This is because inactive use is still a form of use, a use that both offers a domain name holder a chance to work mischief while also depriving a mark holder of the opportunity to employ its mark in a similar domain name. In this instance, we are persuaded by the evidence that Respondent’s employment of the domain name <marlborocoupon.us>, which we have found to be confusingly similar to Complainant’s MARLBORO mark, must cause confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name. Such confusion is exacerbated by Respondent’s insertion in the domain name of the word “coupon,” in an obvious attempt to bait the hook. Under Policy ¶ 4(b)(iv), this behavior is proof of Respondent’s bad faith in registering and using the domain name. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum January 8, 2003) (finding, under Policy ¶ 4(b)(iv), that a domain name was registered and used in bad faith where a respondent registered and used the domain name in an effort to attract Internet users to its resolving website).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MARLBORO mark when Respondent registered the <marlborocoupon.us> domain name. This further demonstrates that Respondent registered the domain name in bad faith. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith, within the meaning of Policy ¶ 4(a)(iii), where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <marlborocoupon.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 26, 2017
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