Philip Morris USA Inc. v. Deborah Gowrie
Claim Number: FA1606001677734
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is Deborah Gowrie (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlboromarijuana.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.
On June 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marlboromarijuana.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@marlboromarijuana.us. Also on June 6, 2016, 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 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant:
1. Complainant, Phillip Morris USA, has manufactured, marketed, and sold cigarettes in the United States using the MARLBORO marks since 1883. Complainant has rights in the MARLBORO marks based on longstanding registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502, registered Apr. 14, 1908). Respondent’s domain, <marlboromarijuana.us>, is confusingly similar to the MARLBORO mark as the domain incorporates the mark in its entirety and merely differs through the addition of the generic term, “marijuana,” and the generic top-level domain “.us.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the MARLBORO marks, has not been identified by the disputed domain name, affiliated with Complainant in any manner, nor does Respondent have rights in the MARLBORO mark or any variation thereof. Further, Respondent’s inactive use of a domain containing Complainant’s MARLBORO marks demonstrates Respondent’s lack of rights or legitimate interests in the domain.
3. Respondent has registered and used the disputed domain name in bad faith. Respondent has exhibited a pattern of bad faith through registering multiple domain names that including Complainant’s marks and other marks owned by Complainant’s parent company, Altria Group, Inc. Respondent’s bad faith is evident through failing to make an active use of the domain name. Finally, Respondent had knowledge of Complainant’s rights in the MARLBORO mark based on the longstanding fame and prominence of the mark.
B. Respondent:
1. Respondent has failed to submit a Response in this proceeding.
1. Respondent’s <malboromarijuana.us> domain name is confusingly similar to Complainant’s MARLBORO mark.
2. Respondent does not have any rights or legitimate interests in the <malboromarijuana.us> domain name.
3. Respondent registered or used the <malboromarijuana.us> domain name 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 contends that it has as rights in the MARLBORO marks based on longstanding registration of the marks with the USPTO (e.g., Reg. No. 68,502, registered Apr. 14, 1908). See Compl., at Attached Annex E. Panels have consistently found, and this Panel may find, that a complainant registering a mark with the USPTO is sufficient to demonstrate rights in a mark. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant next contends that Respondent’s <marlboromarijuana.us> domain is confusingly similar to the MARLBORO marks. Respondent’s domain includes the entire MARLBORO mark, adds the term, “marijuana,” and the county code top-level domain (“ccTLD”) “.us.” Panels have held that adding a generic term to a mark does not prevent a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that adding ccTLDs to a domain does not affect a confusing similarity analysis. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Taken together, the Panel finds that Respondent’s domain is confusingly similar to the MARLBORO marks in which Complainant asserts rights.
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 contends that Respondent is not known by any name incorporating the MARLBORO marks or sought or obtained rights in the MARLBORO mark or variations of the mark. WHOIS information related to the disputed domain identifies Respondent as, “Deborah Gowrie.” See Compl., at Attached Annex B. There does not appear to be any information in the record to indicate that Respondent has any rights in the MARLBORO or similar marks. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); Alibaba Group Holding Limited v. YINGFENG WANG, FA1407001568531 (Forum August 21, 2014) (“There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <alibaba.us> domain name. Therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i).”). The Panel concludes that Respondent is not commonly known by the disputed domain and does not have rights identical to the domain name pursuant to Policy ¶ 4(c)(i) or 4 (c)(iii).
Complainant next contends that Respondent’s inactive use of a domain containing the MARLBORO mark demonstrates Respondent’s lack of rights or legitimate interests in the domain. Respondent’s domain resolves to a website displaying the message, “website coming soon!,” and does not appear to host any other content. See Compl., at Attached Annex. C. Panels have held that a Respondent lacks rights or legitimate interests in a disputed domain name based on a failure to make active use of the domain. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005). The Panel concludes that Respondent lacks rights or legitimate in the disputed domain based on Respondent’s inactive use.
Complainant asserts that Respondent has exhibited a pattern of bad faith through registering multiple domain names that include Complainant’s marks and other marks owned by Complainant’s parent company, Altria Group, Inc. Respondent appears to have registered the domains, <marlboromarijuana.guru>, <parliamentpot.com>, <altriamarijuana.co> and <altriamarijuana.guru>. See Compl., at Attached Annex G. Panels have found bad faith where a respondent registered multiple infringing domain names in a proceeding. See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The Panel finds that Respondent has registered multiple infringing domain names and finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii).
Complainant next contends that Respondent’s bad faith is evident through failing to make an active use of the domain name. As stated previously, Respondent’s domain resolves to a website bearing the message, “website coming soon!” See Compl., at Attached Annex C. Panels have held a respondent to have registered and used a confusingly similar domain in bad faith where a respondent failed to use the domain. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Accordingly, the Panel concludes that Respondent’s inactivity demonstrates bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame, notoriety, and longevity of Complainant's MARLBORO marks, it is inconceivable that Respondent could have registered the <marlboromarijuana.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlboromarijuana.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 18, 2016
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