Administrative panel decision philip Morris usa inc V. Breathe, llc




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ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Breathe, LLC

Case No. D2014-1019


1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (U.S.), represented by Arnold & Porter, U.S.
The Respondent is Breathe, LLC of Knoxville, Tennessee, U.S.

2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that Breathe, LLC is listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amended Complaint on June 20, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. On July 15, 2014, the Respondent sent an email communication to the Center requesting an extension to the Response due date. Upon consent from the Complainant, the Response due date was extended to July 30, 2014. On July 31, 2014, an email communication was received from the Respondent. On August 1, 2014, the Complainant submitted a request for suspension. The proceeding was suspended until September 4, 2014. On September 4, 2014, the Complainant submitted a request to reinstitute the proceeding. The proceeding was reinstituted on September 8, 2014. On September 8 and 9, 2014, a submission was received from the Respondent. On September 11, 2014, a submission was received from the Complainant. On September 12, 2014, a further submission was received from the Respondent.
The Center appointed Martin Schwimmer as the sole panelist in this matter on October 3, 2014. 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.
The Panel exercised its discretion to consider the Respondent’s submission of September 8 and 9, 2014, the Complainant’s submission of September 11, 2014 and the Respondent’s submission of September 12, 2014.

4. Factual Background
The Complainant has exclusive rights in the MARLBORO trademarks. The Complainant manufactures, markets, and sells cigarettes in the U.S., including cigarettes under its famous MARLBORO trademarks.
MARLBORO cigarettes have been made and sold by the Complainant, and various predecessor entities, since 1883, with the modern history of the brand beginning in 1955. For many decades, the Complainant has used the MARLBORO trademarks and variations thereof in connection with its tobacco and smoking-related products.
The Complainant is the registered owner of the incontestable trademarks reflecting the MARLBORO trademark. Numerous UDRP panels have already determined the MARLBORO trademark to be famous (Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan, WIPO Case No. D2011-1735).
Respondent registered the disputed domain name on October 12, 2013. The disputed domain name resolved to a parking page hosted by the Registrar at the time the Complaint was filed.

5. Parties’ Contentions
A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the MARLBORO trademarks. Through widespread, extensive use in connection with its products, the MARLBORO trademarks have become uniquely associated with the Complainant and its products, and are well known and famous throughout the U.S. The Complainant’s registrations for certain of the MARLBORO trademarks establish that it has rights in these trademarks under paragraph 4(a)(i) of the Policy.
The Complainant alleges that the disputed domain name is confusingly similar to the MARLBORO trademarks. The disputed domain name reflects the Complainant’s mark in its entirety. The term “e-cigarette” is well-known shorthand for “electronic cigarette.” Further, previous UDRP panels have found, the addition of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark (UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416).
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the MARLBORO trademarks. The Respondent was never known by any name or trade name that incorporates the word “Marlboro.” The Respondent has never sought or obtained any trademark registrations for “Marlboro” or any variation thereof, and indeed could never do so given the Complainant’s pre-existing and exclusive rights to this mark. The Respondent has not received any license, authorization, or consent — express or implied — to use the MARLBORO trademarks in the disputed domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since.
With regard to bad faith, the Complainant notes that, the Respondent’s misappropriation of the MARLBORO mark by its inclusion in the disputed domain name is no accident. Clearly, the Respondent chose to use this trademark to draw Internet users to its website by capitalizing on the association of the MARLBORO trademark with the Complainant’s tobacco products. As one panel found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, when a complainant’s trademark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,” and thus an illegitimate “trader” such as the Respondent could have no legitimate interest in the trademark. In fact, a previous panel commented in a case involving the Complainant that it was inconceivable for the respondent to have a legitimate use of a domain name incorporating the MARLBORO trademarks “given the longtime use of the MARLBORO trademarks and strength of its brand” (Philip Morris USA Inc. v. private, WIPO Case No. D2005 0790).
The Complainant argues that, the Respondent’s objective at the outset was to divert Internet users seeking to visit the Complainant’s legitimate website to the Respondent’s website. Such misappropriation of the MARLBORO trademarks does not give rise to a right or legitimate interest but, portends the Respondent’s bad faith (Fluor Corporation v. Above.com Domain Privacy / Huanglitech, Domain Admin, WIPO Case No. D2010-0583). Such a use of the Complainant’s trademark for the purpose of misleading or diverting consumers is not bona fide and cannot confer any rights or legitimate interests upon a respondent (CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680); Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in the famous MARLBORO trademarks (Philip Morris USA Inc. v. ADN HOSTING, WIPO Case No. D2007-1609). Even a simple Internet search would have revealed the Complainant’s extensive use of the MARLBORO trademarks as source identifiers for its tobacco products. The Complainant’s rights in the MARLBORO trademarks would also have been obvious through basic domain name searches, Internet searches, and searches of the United States Patent and Trademark Office (“USPTO”) records that are readily accessible online.
The Respondent’s use of the disputed domain name, which incorporates the entirety of the famous MARLBORO mark, for a website displaying pay-per-click advertisements is evidence that the Respondent is using the disputed domain name in bad faith to trade on the goodwill of the Complainant’s MARLBORO trademarks by obtaining revenue from those advertisements displayed on the website. (“Dr. Martens” International Trading GmbH. and “Dr. Maertens” Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1191).
B. Respondent
The Respondent alleges that its use of the disputed domain name has been limited to a default page hosted by the Registrar, and therefore was not operated in a manner calculated to derive a profit from the goodwill associated with the Complainant’s trademark. The Respondent’s intent in obtaining the site was to create “a not-for-profit website to supply health and safety information and news about the e-cigarette industry.” Finally, the Complainant’s protest violates the Respondent’s First Amendment rights.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name incorporates the Complainant’s famous MARLBORO trademark in its entirety with the addition of the descriptive term “e-cigarette.” As the term is descriptive of a product related to that of the Complainant’s cigarette business, and considering that the gTLD suffix may be disregarded in this instance, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.


The Panel notes that it is conceivable that one could read the disputed domain name as consisting of the elements “Marlboroe” and “cigarette”. The Panel finds that “Marlboroe”, as it is not a word, could in that instance be viewed as a typo for MARLBORO, while “cigarette” is of course a descriptive term. Thus the disputed domain name would still be confusingly similar.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no form of association with the Complainant that would allow it to utilize the Complainant’s trademark. Furthermore, the Respondent’s organization name is Breathe, LLC. Finally, the disputed domain name is currently being used merely as a parking page. The Complainant has made a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, thus shifting the burden of production on to the Respondent. See Philip Morris USA Inc. v. Mary Shelly, WIPO Case No. D2006-1367.


The Respondent alleges that it intends to utilize the disputed domain name for a not-for-profit website to supply health and safety information and news about the e-cigarette industry. The Respondent has not established a bona fide intent. The Respondent has merely made a conclusory allegation that it has such an intent. Paragraph 4(c) of the Policy states that the registrant’s use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, may establish rights to and legitimate interests in the domain name. The Respondent has provided neither, and thus has failed to establish such rights or legitimate interests.
Assuming that there was some evidence of demonstrable intent, the Respondent still likely would have failed. The issue is not, as the Respondent argued, one of protected First Amendment Speech, as the speech in question is simply use of the term “Marlboro E-Cigarette” in the disputed domain name (as opposed to, hypothetically, a domain name that did comment, such as “Marlboro is good (or bad, or indifferent)”).
Rather, the issue here is whether the disputed domain name could arguably constitute fair use in relation to an informational website about e-cigarettes. It seems not in this case, for two reasons. First, the Complainant does not offer Marlboro branded e-cigarettes and thus “Marlboro e-cigarette” does not accurately describe the Respondent’s hypothetical informational site. Secondly, even if the Complainant did sell MARLBORO e-cigarettes, it is the Panel’s view that such use would still not be a fair description of an informational website about e-cigarettes. The primary connotation of the per se version of a trademark, especially a famous trademark, is one of origin and not as a subject. Stated differently, the disputed domain name immediately connotes a website from MARLBORO, not a third-party website about MARLBORO. There is a third alternate reason why the Respondent cannot establish a bona fide intent to use the disputed domain name, which will be discussed in the analysis of bad faith, below.

C. Registered and Used in Bad Faith

With regard to bad faith, this is really a very simple dispute. It is easily demonstrated, if by nothing else than referencing the numerous UDRP decisions holding as such, that the Complainant’s MARLBORO trademark is one of the most famous trademarks in the world. The Respondent has failed to establish rights or legitimate interests in the disputed domain name. The passive holding of a domain name reflecting a famous trademark has frequently been found to be bad faith registration. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.


There is another fact that adds a dimension to this dispute. The Panel notes that there are numerous publicly accessible webpages that indicate that the Respondent’s organization, Breathe LLC, appears to be a vendor of e-cigarettes. The Panel does not need to find that the Respondent is a competitor to base its finding of bad faith, but that fact could be relevant in evaluating the Respondent’s allegations to its bona fide intent to provide a noncommercial informational site, as well as its allegations relating to the absence of bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has met the requirements of 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.

Martin Schwimmer

Sole Panelist



Date: October 14, 2014



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