Administrative panel decision philip Morris usa inc V. fc marlboro




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. fc marlboro

Case No. D2015-1753



1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA”), represented by Arnold & Porter, United States.


The Respondent is fc marlboro of Isfahan, Islamic Republic of Iran.


2. The Domain Name and Registrar

The disputed domain name is registered with Tucows Inc. (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.


The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2015.
The Center appointed Yong Li as the sole panelist in this matter on November 26, 2015. 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

The Complainant in this proceeding is Philip Morris USA, a corporation organized and existing under the laws of the Commonwealth of Virginia, United States. Philip Morris USA manufactures, markets, and sells in the United States cigarettes, including cigarettes under its MARLBORO trademarks. Marlboro cigarettes have been made and sold by Philip Morris USA (and various predecessor entities) since 1883.


The Complainant is the registered owner of the MARLBORO trademarks on the Principal Register of the United States Patent and Trademark Office.
The Complainant operates a website at “www.marlboro.com”.
The Panel accepts that the Complainant’s MARLBORO trademarks are well known. Many previous UDRP panels have found the same. See, e.g., 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; Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614; Philip Morris USA Inc. v. Private, WIPO Case No. D2005-0790; Philip Morris USA Inc. v. Cooltobacco.com akaIgor Rodionov, WIPO Case No. D2005-0245; Philip Morris USA Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171.
The Respondent is fc marlboro of Isfahan, Islamic Republic of Iran. The disputed domain name was registered on May 17, 2015. The disputed domain name resolves to an inactive website displaying the error message: “This webpage is not available.”



5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s disputed domain name is confusingly similar to the Complainant’s MARLBORO mark.


The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant further contends that the Respondent registered and uses the disputed domain name in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.




6. Discussion and Findings

In accordance with the Policy, the Complainant asking for transfer of the disputed domain name must prove the following three elements: 1) the Respondent’s disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no rights or legitimate interests in the disputed domain name; and 3) the Respondent has registered the disputed domain name and is using it in bad faith. (Policy, 4(a)).



A. Identical or Confusingly Similar

The Complainant is the owner of the trademark registrations in the USA for MARLBORO. The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name differs from the Complainant’s trademark only by adding “fc” and by the addition of the generic Top-Level Domain (“gTLD”) suffix “.net”.


It is well-established that a domain name wholly incorporating a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. See e.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096; Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995. The mere addition of “fc” to “marlboro” does not distinguish the disputed domain name from the Complainant’s trademark. See Philip Morris USA Inc. v. JIM XIN/Domin Whois Protection Service, WIPO Case No. D2014-0905 (finding that is confusingly similar to the Complainant’s trademark MARLBORO and ordering that the domain name be transferred to the Complainant).
Also the addition of the gTLD suffix “.net” to a disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).


In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Respondent has no connection or affiliation with the Complainant, the Complainant has not licensed or otherwise permitted the Respondents to use the MARLBORO trademark, the Respondent has never sought or obtained trademark registrations for MARLBORO and there is no evidence to indicate that “fc marlboro” is the Respondent’s actual name recognized by the public.
The Respondent has not provided evidence of circumstances of the type specified in the Policy, paragraph 4(c) to prove that the Respondent has rights or legitimate interests in respect of the disputed domain name. Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Complainant’s evidence shows that the disputed domain name resolves to an inactive website displaying an error message. This does not represent a use of the disputed domain name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the Complainant’s MARLBORO trademarks are well known. The Complainant registered the trademarks long before the registration date of the disputed domain name. In addition, the Complainant operated a website at “www.marlboro.com” long before the registration date of the disputed domain name. It is very unlikely that the Respondent would have registered a domain name incorporating the Complainant’s trademark without knowledge of the Complainant’s famous trademark MARLBORO. Based on the foregoing circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith. See Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288 (“with the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus Respondent registered the disputed domain name in bad faith”).


Previous UDRP panels have consistently held that passive holding of a domain name can, under certain circumstances, be considered bad faith use of the domain name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005. The panel finds that the Respondent is using the disputed domain name in bad faith taking into consideration that the Complainant’s MARLBORO trademarks are well known, the disputed domain name is confusingly similar to the Complainant’s well known trademarks, the Respondent passively holds the disputed domain name, to which it has no rights or legitimate interests, and the Respondent has not bothered to respond to the Complainant’s contentions.
Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.


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 disputed domain name be transferred to the Complainant.

Yong Li

Sole Panelist



Date: December 10, 2015



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