Philip Morris USA Inc. v. Davit Papyan
Claim Number: FA1402001544649
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is Davit Papyan (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <online-marlboro.info>, <online-marlboro.com>, <marlboro-search.info>, <cheap-marlboro.info>, and <marlborostore.info>, registered with Wild West Domains, LLC.
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 National Arbitration Forum electronically on February 20, 2014; the National Arbitration Forum received payment on February 20, 2014.
On February 21, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <online-marlboro.info>, <online-marlboro.com>, <marlboro-search.info>, <cheap-marlboro.info>, and <marlborostore.info> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@online-marlboro.info, postmaster@online-marlboro.com, postmaster@marlboro-search.info, postmaster@cheap-marlboro.info, postmaster@marlborostore.info. Also on February 25, 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 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that all of the disputed domain names were registered on May 16, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
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 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.”).
Complainant uses the mark to promote and sell tobacco products to consumers. Complainant notes that it registered the MARLBORO mark with the USPTO over a hundred years ago (Reg. No. 68,502 registered on April 14, 1908). The Panel agrees that Complainant’s trademark registration evidences its rights under Policy ¶ 4(a)(i), regardless of where Respondent actually dwells. 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.”).
Complainant claims that the disputed domain names are all confusingly similar to the MARLBORO mark. Complainant points out that Respondent makes minor additions such as various generic terms, the addition of the necessary gTLD, and in some cases a hyphen. Complainant claims that none of these alterations distinguish the domain names from the MARLBORO mark. The Panel agrees that all of the <online-marlboro.info>, <online-marlboro.com>, <marlboro-search.info>, <cheap-marlboro.info>, and <marlborostore.info> domain names are confusingly similar to the MARLBORO mark for purposes of Policy ¶ 4(a)(i). 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).
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 further argues that Respondent is not known by any of the domain names, nor could it be. Complainant is the exclusive user of the MARLBORO mark and thus Respondent cannot utilize that mark in domain names without Complainant’s authorization. Complainant states that it has not authorized such a use. The Panel notes that the WHOIS information for all of the disputed domain names lists “Davit Papyan” as the registrant of record for the domain names. The Panel here finds there is no basis for determining that Respondent is commonly known by the domain names under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant next argues that Respondent has made no active use of the <online-marlboro.info>, <online-marlboro.com>, <marlboro-search.info>, <cheap-marlboro.info>, and <marlborostore.info> domain names. Complainant notes that all of these disputed domain names resolve to error pages or Internet browser error messages. See Compl., at Attached Ex. F. In Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) the panel found that a period of inactive use of the disputed domain names foreclosed a finding for the respondent under Policy ¶¶ 4(c)(i), (iii). The Panel likewise holds that the inactive holding of all of these domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel agrees that while Complainant does not argue under the factors listed in Policy ¶ 4(b), those factors are examples of bad faith and are not required for success under the Policy. 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.”).
Complainant argues that Respondent is profiting through Internet user’s confusion. Complainant claims that Respondent shuttles Internet users to websites that are inactive. See Compl., at Attached Ex. 7. The Panel agrees that while it is unclear what Respondent might gain from sending Internet users through to inactive websites, it has been long held that inactivity alone can provide evidence of Policy ¶ 4(a)(iii) bad faith. 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).
The Panel is of the view that the passive holding of a domain name does not necessarily circumvent a finding that the disputed domain names are being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
(i) Complainant registered its mark MARLBORO in 1908 and its mark has a strong reputation around the world, and
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Complainant contends that Respondent’s actual or constructive notice of Complainant’s mark is illustrative of bad faith use. Complainant states that the MARLBORO mark is famous and it is unlikely Respondent concocted the term “marlboro” on its own and then elected to combine “marlboro” with generic terms. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <online-marlboro.info>, <online-marlboro.com>, <marlboro-search.info>, <cheap-marlboro.info>, and <marlborostore.info> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 2, 2014
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