Westmore · UDRP DecisionMarlborocigarettes-s.com
The Panel ordered transfer of <marlborocigarettes-s.com>. It found the domain confusingly similar to the MARLBORO trademark because it incorporated the mark and added “cigarettes-s”; found no connection between the domain’s terms and Respondent or any purported activity; and found bad faith from the longstanding, well-known mark, inactive website, absence of an explanation, Respondent’s pattern of registering MARLBORO-formative domains, and false or incomplete contact information.
The timeline behind marlborocigarettes-s.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind marlborocigarettes-s.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how several mutually reinforcing circumstances can establish bad faith even when a domain is not being actively used: a longstanding well-known mark, product-related wording, an undeveloped website, no explanation from the registrant, a pattern of similar registrations, and inconsistent contact data. The case also shows that adding wording describing the trademark owner’s goods may reinforce rather than dispel confusing similarity.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philip Morris USA Inc. v. Jimmy Choo Case No. D2014-0482 1. The Parties Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States of America. Respondent is Jimmy Choo of New Yourk, Nevada, United States of America. 2. The Domain Name and Registrar The disputed domain name <marlborocigarettes-s.com> is registered with GoDaddy.com, LLC (the“Registrar”). 3. Procedural History The Complaint was filed with the WI PO Arbitration and Mediation Center (the “Center”) on March 26, 2014. On March 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 WI PO 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2014. The Center appointed Sally M. Abel as the sole panelist in this matter on May 6, 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. 4. Factual Background Complainant and its predecessors have manufactured and sold cigarettes in the United States under the Marlboro brand since 1883, with the modern history of the brand beginning in 1955. Complainant owns a trademark registration for MARLBORO in the United States dating back to 1908 (Registration No. 0068502) for cigarettes. Complainant also owns and uses the Internet domain name <marlboro.com>. Respondent registered the disputed domain name in August, 2013, without Complainant’s authorization. The disputed domain name expires on August 21, 2014. Complainant states that the disputed domain name directs to an “Apache Test Page” for the Apache HTTP server software, which is a web server application that facilitates interaction between web users and hosted content. Complainant states that this indicates that Respondent has not yet developed the website to which the disputed domain name directs. 5. Parties' Contentions A. Complainant Complainant contends that the disputed domain name <marlborocigarettes-s.com> is confusingly similar to Complainant’s MARLBORO mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent’s registration of the disputed domain name, and use as set forth above, constitutes bad faith registration and use. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Respondent has defaulted. Paragraph 14(b) of the Rules provides that the Panel may draw such inferences from a default as it considers appropriate. Accordingly, the Panel infers from Respondent’s silence that Complainant’s reasonable allegations are, in fact, correct. A. Identical or Confusingly Similar The disputed domain name <marlborocigarettes-s.com> is confusingly similar to Complainant’s MARLBORO trademark. Respondent has simply added “cigarettes-s” after Complainant’s MARLBORO mark, presumably in an attempt to take advantage of consumers attempting to find or access information about Marlboro-branded cigarettes. B. Rights or Legitimate Interests The Panel agrees with Complainant that Respondent has no rights or legitimate interests in the disputed domain name. As further indicated below, there is no connection between the terms comprised in the disputed domain name with Respondent or with any of Respondent’s purported activities. C. Registered and Used in Bad Faith Respondent selected the disputed domain name <marlborocigarettes-s.com> 130 years after Complainant’s predecessor in interest first adopted its now well-known Marlboro brand, is not making active use of the website to which the disputed domain name directs, and has not explained why he obtained the disputed domain name. In the circumstances, these factors constitute bad faith registration and use of the disputed domain name. Moreover, Respondent registered five other domain names, all of which incorporate Complainant’s mark in its entirety (<marlborocigarettesstores.com>; <marlborocigarettessales.com>; <marlborociagrettesonline-s.com>; <cheapmartborocigarettes-s.com>; and <marlborocigarettesuss.com>). On March 28, 2014, these domain names were transferred to Complainant as a result of a National Arbitration Forum decision in Complainant’s favor. Philip Morris USA, Inc. v. Jimmy Choo/Choo Jimmy, NAF Claim No. FA1543163. In that decision, the panel found bad faith based on several grounds, including Respondent’s pattern of conduct of registering multiple domain names incorporating Complainant’s MARLBORO mark and Respondent’s inclusion of false and/or incomplete Whols information. /d. Respondent lists “New Yourk, NV 12201”, but there is no “New Yourk” in Nevada and the “12201” zip code corresponds to Albany, New York. Additionally, Respondent lists the telephone area code “365”, which is for the Ontario, Canada area, not Nevada. For these same reasons, bad faith is established here. 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 <marlborocigarettes-s.com> be transferred to Complainant. Sally M. Abel Sole Panelist Date: May 20, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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