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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA, Inc. v. Andrey Kulikov

Case No. D2007-1450

1. The Parties

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

The Respondent is Andrey Kulikov, OnLeader, St. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <e-marlboro.com> (herein, “Disputed Domain Name”) is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com (herein, “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 4, 2007, the Center transmitted by email to Registrar a request for verification in connection with the Disputed Domain Name. Through an email exchange, Registrar provided verification, and in particular, confirmed that the Respondent is listed as the registrant, and confirmed its (Registrar’s) name and correct mailing address. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint (hereinafter, still “Complaint”) on October 16, 2007. 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 October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2007.

The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on November 16, 2007. 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

Complainant’s portfolio of US trademarks for, or derived from, the mark MALBORO (herein collectively, “MALBORO Trademarks”) includes the following United States of America federal registrations:

Trademark	Registration No.	Date Registered
MARLBORO	68,502	April 14, 1908
MARLBORO Red Roof design	<938,510	July 25, 1972
MARLBORO LIGHTS	1,039,412	May 11, 1976
MARLBORO LIGHTS Label	1,039,413	May 11, 1976
MARLBORO LIGHTS MENTHOL Label	1,544,782	June 20, 1989
MARLBORO ULTRA LIGHTS Label	1,651,628	July 23, 1991

The Disputed Domain Name was registered on June 20, 2007.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar with the MALBORO Trademarks in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (See, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (See Procedural History, supra).

In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.

To succeed in accordance with paragraph 4(a) of the Policy, Complainant must meet three requirements that will be considered in turn below.

A. Identical or Confusingly Similar

Complainant contends (and the Panel accepts as uncontroverted and convincing) that it has rights in the MALBORO Trademarks and that the Disputed Domain Name is confusingly similar thereto.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing) that it (and its predecessors) have manufactured, marketed, and sold cigarettes and smokeless tobacco products, under its MARLBORO Trademarks since 1883 in the United States of America.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing) that its MARLBORO Trademarks are famous. In support, Complainant refers to WIPO administrative panels decisions: Philip Morris USA Inc. v. Shelly, WIPO Case No. D2006-1367 (the MARLBORO Trademarks “…are among the most valuable trademarks in the world”); Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245; Philip Morris USA Inc. v. Dinoia, WIPO Case No. D2005-0171; Philip Morris Inc. v. r9.net, WIPO Case No. D2003-0004; and Philip Morris Inc. v. Tsypkin, WIPO Case No. D2002-0946.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing), that Respondent incorporated exactly the root mark of Complainant’s MARLBORO Trademarks, i.e. the word MALBORO, into the Disputed Domain Name with the mere addition of the letter “e-” as a prefix; and that Internet users who wish to visit Complainant’s website, may type the Disputed Domain Name along with the prefix term “e-” as a reference to electronic commerce involving Complainant’s products.

Further, Complainant contends (and the Panel accepts as uncontroverted and convincing), that the adaptation of a recognized trademark in a domain name by the addition or insertion of the term “e-”, in the context of the Internet, does not prevent a finding of confusing similarity. In support, Complainant refers to WIPO administrative panels decisions: Inter-IKEA Systems B.V. v. Technology Education Center, WIPO Case No. D2000-0522, at paragraph 5 (“The Panel does not consider the addition of the prefix ‘e’ to a service mark would be sufficient to distinguish new internet service sources from existing service sources. . . . [T]he addition of the prefix ‘e-’ to the Complainant’s IKEA registered mark and trademark to form the domain name “[e.ikea]” is insignificant and that therefore the domain name is confusingly similar to the Complainant’s trademark IKEA.”); General Electric Co. v. Online Sales.com, Inc., WIPO Case No. D2000-0343; Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; and Sasol Limited v. Raymond Wong, WIPO Case No. D2005-0122.

In conclusion, the Panel accepts Complainant’s contentions supported by the evidence of record, that it has rights in the MALBORO Trademarks and that the Disputed Domain Name is confusingly similar thereto, and concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends (and the Panel accepts as uncontroverted and convincing), that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Respondent uses the Disputed Domain Name with a website that “reports” on Complainant and its products branded with its MARLBORO Trademarks, and suggests that those seeking “discount” cigarettes “for a very cheap price” should visit another website, TobaccoWizard.com. Complainant contends (and the Panel accepts as uncontroverted and convincing) that Internet users who have accessed Respondent’s website are likely to be confused into believing that its website is authored, endorsed, sponsored, operated by, or otherwise affiliated with, Complainant.

Complainant contends in particular (and the Panel accepts as uncontroverted and convincing) the following: that Respondent has never sought or obtained any trademark registrations for “Marlboro”, and indeed, could never do so, because the MARLBORO Trademarks and the many variations thereof belong exclusively to Complainant in the United States of America; that Respondent is not a licensee of Complainant; that Respondent has not obtained permission (whether express or implied) from Complainant to use the MARLBORO Trademarks, or any domain names incorporating them, when Respondent registered and began using the Disputed Domain Name, or since then.

Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the statutory rights in the MALBORO Trademarks (provided by the registrations in the United States of America (Section 4, Factual Background, supra)), and of the common law rights associated with the MALBORO Trademarks (that flow from Complainant’s contentions about the scope and longevity of its business activities and fame in the marketplace (Section 6A, supra)), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of rights or legitimate interests by Respondent in the Disputed Domain Name, do not exist either.

The Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing), that Respondent registered the Disputed Domain Name in bad faith by doing so knowing of Complainant’s rights in the MARLBORO Trademarks. Complainant contended that “it is simply inconceivable that Respondent was unaware of Complainant’s rights…” in the MARLBORO Trademarks, which have international fame.

Respondent uses the Disputed Domain Name in bad faith by associating it with a website that includes articles about Complainant’s products branded with Complainant’s MARLBORO Trademarks, and suggests that those seeking “discount” cigarettes “for a very cheap price” should visit TobaccoWizard.com. Complainant contends (and the Panel accepts as uncontroverted and convincing) that Respondent has attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the MARLBORO Trademarks.

Furthermore, Respondent’s knowledge of Complainant’s MARLBORO Trademarks is further demonstrated by Respondent’s use of the MARLBORO Trademarks in said website, and accordingly reinforces the bad faith nature of its registration of the Disputed Domain Name.

The Panel concludes that the third requirement of the Policy is met.

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 <e-marlboro.com> be transferred to the Complainant.

Mark Ming-Jen Yang
Sole Panelist

Dated: November 30, 2007