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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Malton International Ltd.

Case No. D2009-1263

1. The Parties

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

The Respondent is Malton International Ltd. of Victoria Mahe, the Republic of Seychelles.

2. The Domain Name and Registrar

The disputed domain name <us-marlboro.com> ("the Domain Name") is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2009. On September 24, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On September 24, 2009, GoDaddy.com, Inc. 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 Domain Name. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on October 21, 2009.

The Center appointed Warwick Smith as the sole panelist in this matter on October 28, 2009. 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.

In the absence of a Response, the Panel has checked to ensure that the Complaint has been properly notified to the Respondent as required by the Rules. The Panel is satisfied that it has been.

4. Factual Background

The following uncontested facts are taken from the Complaint.

The Complainant

The Complainant is one of the world`s best known manufacturers of cigarettes. It is an American corporation, with its headquarters in Richmond, Virginia, and it is part of the Altria group of companies.

The Complainant is the registered proprietor of the word mark MARLBORO in the United States ("the Complainant`s mark"). The Complainant`s mark has been registered (in international class 34) in respect of cigarettes, since 1908.

The Complainant owns the domain name <marlboro.com> where it operates a website ("the Complainant`s website").

The Respondent and the Domain Name

The Domain Name was registered on March 11, 2009. It resolves to a website ("the Respondent`s website") which features articles relating to the Complainant and to cigarette smoking generally. There are a number of click-through links to third party websites.

The word "marlboro" is prominent on the Respondent`s website which, on the date of writing this decision, also includes prominently, in stylized form, the statement: "The Philip Morris USA Story. PhilipMorrisUSA an Altria Company". There is also a table setting out the Altria Group`s corporate structure and, beside the table, an Altria Group logo. The table and logo appear to have been copied exactly from the corporate structure table and logo which appear on the Altria Group`s website at "www.altria.com"(right down to the same colors and fonts).

The click-through links are grouped under various categories. Under a "Retailers" category, the links "Cigarettes online", and "Marlboro cigarettes" appear.

Clicking on the "Cigarettes online" link takes the site visitor to a website at "www.cigs4us.com", a site operated by a discount retailer of cigarettes (including some brands manufactured by the Complainant`s competitors). The evidence shows that the domain name <cigs4us.com> was, as recently as early 2008, owned by the Respondent.

Clicking on the "Marlboro cigarettes" link on the Respondent`s website, takes the site visitor to a website at "www.hot-cigs.com." It too is an online cigarette retailing site, through which cigarettes (including the brands of some of the Complainant`s competitors) are sold at discount prices. The Complainant produced evidence showing that as recently as June 2008, the <hot-cigs.com> domain name was owned by the Respondent.

The Respondent also operates websites at "www.topcigarettes.net", "www.best-tobacco.com", and "www.tobaccoandcigarettes.com". These websites offer cigarettes of various brands, at discount prices.

At the bottom of each page of the Respondent`s website, there is the statement: "Marlboro country © Powered by us-marlboro". According to the Complaint, the Complainant has used a "Marlboro Country" advertising campaign for some decades.

5. Parties` Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusingly similar to the Complainant`s mark. Numerous panels have held that a domain name is confusingly similar to a trademark where the domain name incorporates the complainant`s mark in its entirety (citing America Online, Inc. v. aolgirlsgonewild.com, NAF Claim No. 117319). In this case, the Respondent has incorporated the Complainant`s mark in full in the Domain Name, with the mere addition of the abbreviation "us". Consumers expect to find a trademark owner on the Internet at a domain name composed of the trademark owner`s name or mark, and the addition of the abbreviation "us" does not dispel the confusing similarity.

The Domain Name creates initial interest confusion, causing the diversion of Internet traffic looking for the Complainant`s website to the Respondent`s website. The generic ".com" is irrelevant to the issue of confusing similarity.

2. The Respondent has no rights or legitimate interests in the Domain Name, for the following reasons:

(i) The Respondent has never sought or obtained any MARLBORO trademark.

(ii) The Respondent is not a licensee of the Complainant, and has not obtained the Complainant`s permission to use the Complainant`s mark, or any domain name incorporating the Complainant`s mark.

(iii) The Complainant`s mark is distinctive, and the only reason the Respondent chose the Domain Name was because it was seeking to create an impression of an association with the Complainant. (The Respondent was clearly aware of the Complainant and its famous MARLBORO brand prior to registering the Domain Name and establishing the Respondent`s website. That is established by the Respondent`s unauthorized sale of MARLBORO cigarettes on its various online cigarettes websites.)

3. The Domain Name has been registered and is being used in bad faith, having regard to the following:

(i) The Respondent was aware of the Complainant`s rights in the Complainant`s mark, which has achieved nationwide fame.

(ii) The Respondent`s use of copyright-protected portions of the website operated by the Complainant`s parent company Altria, demonstrates that the Respondent is not making a legitimate use of the Domain Name. Similarly, the Respondent`s use of the "Marlboro Country" expression, and the "us-marlboro" in the copyright notice at the bottom of the pages on the Respondent`s website, demonstrate the absence of any legitimate use of the Domain Name, or of any bona fide offering of goods.

(iii) The Respondent is using the Respondent`s website to misdirect Internet users and confuse them regarding the official source of MARLBORO products. It is using the Domain Name to send consumers to the online retailer websites at "www.cigs4us.com" and "www.hot-cigs.com". Those websites are undoubtedly linked with the Respondent, and they offer the Complainant`s goods for sale in connection with a domain name (the Domain Name) which falsely suggests an affiliation with, endorsement by, or permission from, the Complainant.

(iv) The websites at "www.cigs4us.com" and "www.hot-cigs.com" also offer for sale goods of the Complainant`s competitors. That is further evidence of bad faith under the Policy, paragraph 4(b)(iv) (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).

(v) The Respondent`s very method of infringement – the exact use of the Complainant`s mark to lure consumers to the Respondent`s website – demonstrates bad faith use under the Policy (citing Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 and Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861).

(vi) The Respondent`s registration and use of the Domain Name creates initial interest confusion, which occurs when Internet users are attracted to the Respondent`s website because of the Respondent`s use of the Complainant`s mark in the Domain Name.

(vii) The Domain Name is so obviously indicative of the Complainant`s products that its use of the Domain Name would inevitably lead to confusion of some sort. "When a Domain Name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith` (citing Kraft Foods, Inc. v. Nowon Uknow, WIPO Case No. D2005-1153).

B. Respondent

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

6. Discussion and Findings

A. What the Complainant must prove under the Policy – General

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

"…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 applicable".

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to "decide the dispute based on the complaint". Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent`s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.

B. Identical or Confusingly Similar

The Complainant has proved this part of the Complaint. It is the registered proprietor of the Complainant`s mark in the United States of America, and the Complainant`s mark has been incorporated in the Domain Name in its entirety. The Panel accepts the Complainant`s submission that the incorporation of a complainant`s mark in a disputed domain name will often be sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy, and in this case the only difference between the Domain Name and the Complainant`s mark is the addition in the Domain Name of the abbreviation "us" followed by a hyphen. Neither the "us" nor the hyphen do anything to dispel the confusing similarity caused by the use of the Complainant`s mark in the Domain Name. Indeed, the use of the hyphen, if anything, causes the Complainant`s mark to stand out more prominently in the Domain Name. The "us" is a well-known abbreviation for the United States of America, and of course the Complainant`s principal business operations are conducted from that country.

Those factors are sufficient to establish that the Domain Name is confusingly similar to the Complainant`s mark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the Center`s online document, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:

"…a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP".

In this case, the Complainant has not authorized the Respondent to use the Complainant`s mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business operated by it, might be commonly known by the Domain Name, and there is therefore no evidentiary basis for any claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor does it appear that the Respondent could claim a right or legitimate interest under paragraph 4(c)(iii) of the Policy – the Panel is satisfied that the Respondent`s website is substantially commercial in nature, being designed to attract Internet users looking for websites associated with the Complainant`s MARLBORO cigarettes, and then to divert a proportion of those people to the online cigarette stores at "www.cigs4us.com" and "www.hot-cigs.com". It is true that the Respondent`s website does contain some articles and other information relating to the Complainant and its products, and to cigarette smoking generally, but the click-through links to commercial websites reveal a commercial intention which takes the case outside the "noncommercial or fair use ... without intent for commercial gain ..." protection which is available to domain name registrants under paragraph 4(c)(iii) of the Policy.

The foregoing factors are sufficient to establish a prima facie case of "no rights or legitimate interests", so the evidentiary onus shifts to the Respondent to show that it does have some right or legitimate interest in the Domain Name. The Respondent has failed to file any Response, and has therefore failed to discharge that evidentiary onus. The Complainant must therefore succeed on this part of its Complaint.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent`s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant`s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent`s] website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent`s] website or location or of a product or service on [the respondent`s] website or location.

The Complainant has also proved this part of its Complaint. The Panel has come to that view for the following reasons:

(i) The Respondent was obviously aware of the Complainant and its Marlboro cigarettes when it registered the Domain Name. Quite apart from the worldwide renown of the Complainant`s mark, the Respondent`s website prominently features the Complainant and its products, and even provides detailed information relating to the Altria Group.

(ii) Without any authority from the Complainant, the Respondent has incorporated the Complainant`s mark in the Domain Name, and it has reproduced on the Respondent`s website both the Complainant`s mark and copyright-protected material from the website operated by the Complainant`s parent company (including the parent company`s logo). The copyright claim: "Marlboro country © Powered by us-marlboro" strongly suggests that the Respondent`s website is either operated by or connected with the Complainant, as does the prominent and stylized use of the expression "PhilipMorrisUSA an Altria Company". There does not appear to be any disclaimer advising site visitors that that is not the case; indeed the Respondent`s website appears to have been designed to create the false impression of an association with the Complainant.

(iii) The Respondent`s website provides click-through links to online cigarette retailers selling products manufactured by the Complainant`s competitors. There would be no point in the Respondent providing those click-through links if the Respondent were not deriving financial gain from so doing, whether on a "pay-per-click" basis or because the Respondent retains some interest in the businesses operated at the "www.cigs4us.com" and "www.hot-cigs.com" websites.

(iv) The circumstances fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent`s website, by creating a likelihood of confusion with the Complainant`s mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent`s website.

(v) The Respondent`s failure to file any Response in this proceeding is consistent with the Panel`s conclusion that the Domain Name was registered, and has been used, in bad faith.

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

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Warwick Smith
Sole Panelist

Dated: November 9, 2009