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WIPO Arbitration and
Mediation Center
ADMINISTRATIVE PANEL
DECISION
Philip Morris USA Inc. v. Sylvester Spinetta
Case No. D2004-0317
1. The Parties
The Complainant is Philip Morris USA Inc., Rye Brook, New York, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Sylvester Spinetta, Sharpsburg, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <marlboros.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2004. On April 30, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 3, 2004, Register.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2004.
The Center appointed Henry H. Perritt, Jr. as the Sole Panelist in this matter
on June 2, 2004. 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
Philip Morris USA (“Philip Morris” or “the Complainant”)
manufactures, markets, and sells cigarettes, including cigarettes under the
MARLBORO trademark. Phillip Morris is the registered owner of the following
trademarks registered on the Principal Register of the United States Patent
and Trademark office: Marlboro (No. 68,502, April 14, 1908), Marlboro Red Roof
Label (No. 938, 510, July 25, 1972), Marlboro Lights (No. 1,039, 412, May 11, 1976),
Marlboro Lights Label (No. 1,039,413, May 11, 1976), Marlboro Lights Menthol
Label (No. 1,544,782, June 20, 1989), Marlboro Ultra Lights Label (No. 1,651,628,
July 23, 1991).
5. Parties’ Contentions
A. Complainant
Philip Morris USA has spent substantial time, effort and money promoting the
MARLBORO trademarks throughout the United States, and has developed substantial
goodwill in the marks. Several WIPO panels have determined that the MARLBORO
trademark is famous: Philip Morris, Inc. v. r9.net, WIPO
Case No. D2003-0004 paragraph 4 (February 28, 2003) transferring the domain
name <marlboro.com>; characterizing MARBORO as among most widely recognized
trademarks in US; Philip Morris Inc. v. Alex Tsypkin, WIPO
Case No. D2002-0946 paragraph 4 (February 13, 2003) (transferring domain
name <discount-marboro-cigarettes.com>, and characterizing MARLBORO trademark);
Philip Morris Inc. v. Eddy Fitch, WIPO
Case No. D2002-0869 paragraph 4 (November 8, 2002) (transferring <cheap-marlboro-cigarettes.net>;
MARLBORO mark is well-known in US).
Respondent registered the domain name <marlboros.com> and used the domain name to redirect Internet users to an active website “www.totalsmokes.com,” with which Philip Morris USA cigarettes and competing brands are offered for sale. On April 14, 2003, Philip Morris USA wrote to Respondent, alleging that Respondent’s use of the <marlboros.com> domain name infringed Philip Morris’s rights in the Marlboro trademarks and violated the Anti Cybersquatting and Consumer Protection Act, and demanded that Respondent cease using the domain name, and either cancel it or transfer it to Philip Morris.
Respondent at other times has offered the <marlboros.com> domain name for sale for a price in excess of his documented out-of-pocket costs directly related to the domain name.
Philip Morris contends that the disputed domain name is confusingly similar to Philip Morris’s trademarks, and that Respondent’s use of the domain name violates the Lanham Act, the Dilution Act, and the Anticybersquatting Act. It contends that Respondent has no rights in the domain name, and that his registration and use of the domain name constitutes bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy and Rules, when a Respondent defaults, the Panel may choose to accept the Complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy, sufficient to order cancellation or transfer of the disputed domain name.
A. Identical or Confusingly Similar
The domain name <marlboros.com> is identical
to or confusingly similar to the MARLBORO mark. All of the relevant authority
embraces the proposition that the addition of an “s” to the letters
constituting a trademark fails to negate legal identity or similarity to the
mark. See OfficeMax, Inc. and OMX v. Mark Braska, WIPO
Case No. D2002-0431 paragraph 6(c) (June 27, 2002) (finding that addition
of single letter to a domain name does not defeat finding of confusing similarity;
citing cases); accord Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir.
2001) (slight misspelling or alteration of registered mark satisfied element
of confusing similarity; affirming judgment for plaintiff under ACPA); Educational
Tours, Inc. v. Hemisphere Travel, Inc., No. 04 C 0559, 2004 WL 887417 (N.D.
Ill. April 26, 2004) (denying motion to dismiss; registering domain name that
is slight misspelling of protected mark constitutes impermissible “typosquatting”).
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain
name. There is no evidence that Respondent was commonly known by the name “Marlboro”.
Policy, paragraph 4(c)(ii). It has not used the disputed domain name “in
connection with the bona fide offering of goods and services.”
Policy, paragraph 4(c)(i). It is not making legitimate noncommercial or fair
use of the domain name without intent for commercial gain to misleadingly divert
consumers . . . .” Policy, paragraph 4(c)(iii). The fame of the MARLBORO
mark put the Respondent on constructive notice of ownership of the mark by another
when he registered it, negating the possibility of innocent belief that he could
enjoy independent rights in it. Moreover use of a protected mark belonging to
another to sell goods branded by the other, does not constitute a bona fide
offering of goods or services. Microsoft Corporation v. Microsof.com aka
Tarek Ahmed, WIPO Case No. D2000-0548
paragraph 6 (July 21, 2000) (using a protected mark in a domain name to sell
goods identified with complainant does not constitute bona fide offering
of goods under paragraph 4(a)(i) of the Policy).
C. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name to sell cigarettes branded
as MARLBOROs establishes that he meant to trade on Philip Morris’ goodwill
in the brand, thus establishing bad faith under paragraph 4(b)(iv) of the Policy.
See Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO
Case No. D2003-1042 paragraph 6(c) (March 3, 2004) (by advertising products
which might be generally associated with Complainant’s mark, Respondent
attempted for commercial gain to attract Internet users by creating a likelihood
of confusion with the Complainant’s mark, in violation of paragraph 4(b)
of the Policy); Belo Corp. v. George Latimer, WIPO
Case No. D2002-0329 paragraph 5(b)(iii) (May 16, 2002) (fame and longstanding
use of mark by Complainant supports conclusion that Respondent’s use was
opportunistic effort to trade on Complainant’s goodwill).
Respondent’s offering of the disputed domain name for sale at a price
in excess of his documented out-of-pocket costs directly related to the domain
name establishes bad faith under paragraph 4(b)(i) of the Policy. See VENTURUM
GmbH v. Coventry Investments, Ltd., DomainCollection Inc., WIPO
Case No. D2003-0405 paragraph 6(c) (July 21, 2003) (offering domain name
for sale on website constitutes offer to sell to complainant, complainant’s
competitors and others).
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <marlboros.com>
be transferred to the Complainant.
Henry H. Perritt, Jr.
Sole Panelist
Dated: June 13, 2004