WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Proxy Protection LLC / Kamran Khan

Case No. D2018-2533

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Proxy Protection LLC of Brea, California, United States / Kamran Khan of Karachi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <marlboro-com.club> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 14, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2018.

The Center appointed Marina Perraki as the sole panelist in this matter on December 18, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

As per Complaint, Complainant is active in the tobacco industry and uses the MARLBORO trademark in connection with several variations of MARLBORO brand cigarettes.

Complainant is also the owner of numerous MARLBORO trademark registrations. These include:

- United States trademark registration no. 68,502 (word and device mark), filed on October 17, 1907 and registered on April 14, 1908, for goods in international class 34, with first use in 1883; and

- United States registration no. 3,365,560 (word mark), filed on July 23, 2007 and registered on January 8, 2008, for goods in international class 34, with date of first use August 6, 2007.

As per Complaint, Complainant has spent substantial time, effort and money, advertising and promoting the MARLBORO trademarks and has thus developed substantial goodwill in them.

Per Complaint, Complainant is the owner of the domain name <marlboro.com>, registered on March 6, 2000, which, as per Complaint, points to Complainant’s website, “www.marlboro.com”.

The Domain Name was registered on July 11, 2018, and resolves to an inactive page indicating “This site can’t be reached”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the MARLBORO mark.

The Panel finds that the Domain Name <marlboro-com.club> is confusingly similar with the MARLBORO trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The hyphen “-” and the letters “com”, which are added in the Domain Name, do not avoid a finding of confusing similarity, as they are non-distinctive (Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1 , WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.club” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <marlboro-com.club> is confusingly similar to the MARLBORO trademark of Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name is used for a website that resolves to a blank page and lacks content.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s MARLBORO trademarks are well-known internationally. Because the MARLBORO mark had been widely used since 1883 and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s trademark rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of MARLBORO mark on the Internet, including under its website “www.marlboro.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, the Domain Name incorporates in whole Complainant’s mark plus a hyphen and the letters “com” and it is practically identical to an existing domain name of Complainant, namely <marlboro.com> registered on March 6, 2000 and widely used for corresponding Complainant’s website as per Complaint. Use of the letters “com” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.

As Complainant demonstrates, Respondent is engaged in a series of domain name registrations that infringe trademarks of third parties (Société Air France v. Domain Administrator, See PrivacyGuardian.org / Steve David, Kamran Khan, Muhammad Faisal, WIPO Case No. D2018-1986; Delta Air Lines, Inc. v. Whois Privacy Corp.; WhoisGuard, Inc.; Domain Protection Services, Inc.; PrivacyGuardian.org; Steve David; Kamran Khan; Domain Admin, Whois Privacy Corp.; Steven Fransworth; Lisa Alex; Natasha Gupta; Asgar Khan; Marcellus Coleman; Steve David; Raul Bogdan; Irfan Khan; Waseem A Ali; Tonicia Kelly; James Vills; George Eden, YPS, WIPO Case No. D2018-1564; and Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Irfan Khan, Kamran Khan, WIPO Case No. D2018-0393).

This pattern can be used in support of bad faith registrations (Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1664; Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investment Limited, WIPO Case No. D2001-1095; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881).

Lastly, as Complainant has demonstrated, the Domain Name was registered with a privacy shield service to hide the registrant’s identity.

As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Société Air France v. Domain Administrator, See PrivacyGuardian.org / Steve David, Kamran Khan, Muhammad Faisal, supra; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Clerical Medical Investment Group Limited v. Clericalmedical.com, WIPO Case No. D2000-1228; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447; WIPO Overview 3.0, section 3.3).

The Panel considers the following factors: (i) the worldwide reputation of Complainant’s mark, which has been repeatedly recognised (in, inter alia, Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263), (ii) the failure of Respondent to submit a response, (iii) the concealment of the Respondent’s identity through use of a privacy shield, (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the corresponding website is inactive, and (v) the fact that Respondent is engaged in a series of domain name registrations that infringe trademarks of third parties.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <marlboro-com.club> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: January 1, 2019