Philip Morris USA Inc. v. Andreas Vool / JJK LLC
Claim Number: FA1402001544092
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Andreas Vool / JJK LLC (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboro-online.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 19, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <marlboro-online.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@marlboro-online.biz. Also on February 20, 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 March 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of tobacco products.
2. Complainant is the registered owner of the United States Patent and Trademark Office ("USPTO") registration for MARLBORO (Reg. No. 68,502 registered April 14, 1908).
3. The <marlboro-online.biz> domain name was registered on May 22, 2013.
4. The disputed domain name not resolve to an active website.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant uses the MARLBORO mark in connection with the sale of tobacco products. Complainant argues that it has used the mark for well over a century, as evidenced by Complainant’s USPTO registration (Reg. No. 68,502 registered April 14, 1908). The Panel agrees that such longstanding registration of the MARLBORO mark evidences Policy ¶ 4(a)(i) rights, even if Respondent is not located in the United States. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MARLBORO mark. Complainant further argues that Respondent’s <marlboro-online.biz> domain name is confusingly similar to the MARLBORO mark. Complainant notes that Respondent adds the generic term “online” and the gTLD “.biz” to the mark in forming the domain name. The Panel further notes that Respondent adds a hyphen between “marlboro” and “online.” The Panel agrees that a gTLD, hyphenation, and a generic term are not distinguishing vis-à-vis the MARLBORO mark. See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy,” a gTLD, and a hyphen). Thus the Panel agrees that the <marlboro-online.biz> domain name is confusingly similar to the MARLBORO mark under Policy ¶ 4(a)(i).
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises
from the following considerations:
(a) Respondent has chosen to take Complainant’s MARLBORO
trademark and to use it in its domain name, adding the expression “online” , thus implying that the domain name is an official domain name of Complainant leading to an official website of Complainant dealing with the sale of Complainant’s tobacco products online;
(b) Respondent has made no active use of the disputed domain name;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent has never been known by this domain name. The Panel notes that the only evidence as to Respondent’s identity is the disputed domain name’s WHOIS information, which lists “Andreas Vool / JJK LLC” as the registrant of record. As there is no evidence to establish a tie between Respondent and the <marlboro-online.biz> domain name, the Panel declines to make findings in favor of Respondent under Policy ¶ 4(c)(ii). See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant argues that Respondent has made no active use of the <marlboro-online.biz> domain name. The Panel notes that upon entering the <marlboro-online.biz> domain name into its web browser, Complainant was sent to an error message. See Compl., at Attached Ex. E. In Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) the panel could find no reason to view a longstanding inactive use of a domain name as either bona fide under Policy ¶ 4(c)(i) or legitimately noncommercial or fair under Policy ¶ 4(c)(iii). The Panel here likewise agrees that Respondent is not providing a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use through the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name
0was registered and used in bad faith. That is so for the following reasons.
First, Complainant does not make contentions under Policy ¶ 4(b), but the Panel finds this to be of little concern as ¶ 4(b) is merely an illustrative list of bad faith, and not a requirement for success under the Policy. See, e.g., 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.”).
Secondly, Complainant argues that Respondent’s bad faith is inferred through its decision to make no active use of the <marlboro-online.biz> domain name. The Panel again notes that the disputed domain name evidently has no website associated with it. See Compl., at Attached Ex. E. The Panel finds that Respondent’s Policy ¶ 4(a)(iii) bad faith is evident through the continued holding of an inactive, confusingly similar domain name. 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).
Thirdly, Complainant further argues that Respondent uses the <marlboro-online.biz> domain name to capitalize on the initial interest confusion that Internet users may suffer when they enter the <marlboro-online.biz> domain name believing that the domain name shall be associated with the MARLBORO mark. The Panel acknowledges that the doctrine of initial interest confusion has waned of late, as some courts have found that the threshold at which the modern Internet user becomes “initially confused” is much higher than in the late 1990s or early 2000s. See, e.g., 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. July 16, 2013). However, the Panel also agrees that a domain name may still create initial interest confusion because Respondent uses the MARLBORO mark in the <marlboro-online.biz> domain name to attract the attention of consumers in Policy ¶ 4(a)(iii) bad faith. See The University of Durham v. Amit Matalia / C.I.T., FA 1529420 (Nat. Arb. Forum Dec. 19, 2013) (The Panel agrees that the initial interest confusion suffered when users searching for Complainant are instead redirected to Respondent’s site outweighs the effect of Respondent’s disclaimer. Therefore, the Panel concludes that the disclaimer cannot absolve Respondent of bad faith registration or use for the purposes of Policy ¶ 4(a)(iii).”).
Thirdly, Complainant further argues that Respondent registered the <marlboro-online.biz> domain name with full knowledge of Complainant’s rights in the MARLBORO mark. As the Panel believes that Respondent could have had actual knowledge of Complainant’s mark when registering the <marlboro-online.biz> domain name, the Panel finds Policy ¶ 4(a)(iii) bad faith registration. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name
using the MARLBORO mark , Respondent registered and used it in bad faith
within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboro-online.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 20, 2014
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