Westmore · UDRP DecisionMarlborom.com
The Panel ordered transfer of <marlborom.com>. It found the domain confusingly similar to the Complainant’s famous MARLBORO mark because it incorporated the mark with only an additional letter “m.” The Respondent lacked rights or legitimate interests, and the Panel found bad-faith registration and use based on the fame and longstanding registration of MARLBORO and the Respondent’s use of the confusingly similar domain to attract consumers for commercial gain.
The timeline behind marlborom.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 marlborom.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a straightforward single-letter domain variation involving a famous mark. The Panel treated the complete incorporation of MARLBORO, coupled with only a final “m,” as clearly confusingly similar and relied heavily on the mark’s fame and age to infer the Respondent’s knowledge. It also shows that an unproven click-revenue allegation was not decisive where the record otherwise showed a commercial directory page, no authorization, no evidence of legitimate interests, and no response.
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. Luca Brignoli Case No. D2014-1180 1. The Parties The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“US”), represented by Arnold & Porter, US. The Respondent is Luca Brignoli of Urgnano, Bergamo, Italy. 2. The Domain Name and Registrar The disputed domain name <marlborom.com> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 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 July 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2014. The Center appointed Charles Gielen as the sole panelist in this matter on August 12, 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 The Complainant owns the trademark MARLBORO registered among others in the United States under No. 68,502 on April 14, 1908 for cigarettes. The disputed domain name <marlborom.com> was created on January 23, 2014. This domain name resolves to a directory website. The website displays links to various web hosting services. 5. Parties’ Contentions A. Complainant The Complainant manufactures, markets and sells cigarettes in the United States, including cigarettes under the trademark MARLBORO which is a famous trademark. 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 trademark MARLBORO and variations thereof in connection with its tobacco and smoking-related products. The Complainant has spent substantial time, effort and money advertising and promoting the trademark MARLBORO throughout the United States, and has thus developed substantial goodwill in the trademark MARLBORO. Through such widespread, extensive efforts, the trademark MARLBORO has become distinctive and is uniquely associated with the Complainant and its products. The Complainant points at numerous UDRP panels that already have determined that the trademark MARLBORO is famous, such as e.g. , Philip Morris USA Inc. v. ICS Inc ., WIPO Case No. D2013-1306 and Philip Morris USA Inc. v. Pieropan , WIPO Case No. D2011-1735 . Furthermore, the Complainant has registered the domain name <marlboro.com>. This domain name points to the Complainant’s website “www.marlboro.com”, which enables access to information regarding the Complainant, MARLBORO products, and special offers to age-verified adult smokers 21 years of age or older. The Complainant did not grant any license, permission, authorization or consent to the Respondent to use the disputed domain name. The disputed domain name resolves to a directory website. The website displays links to various web hosting services. The Complainant believes that these links may change from time to time and that the Respondent receives revenue when Internet users click on these links. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision. A. Identical or Confusingly Similar The Complainant proves that it has rights in the trademark MARLBORO among others based on the aforementioned registration. This trademark is a distinctive mark and very famous. The disputed domain name consists of the word “marlborom”. In making the comparison between the trademark and the disputed domain name the generic Top-Level Domain (“gTLD”) suffix is usually disregarded. Therefore, the comparison should be made between MARLBORO at the one hand and “marlborom” at the other. These signs seen as a whole show a clear resemblance. The addition of the letter “m” does not change the visual similarity between the signs at hand. It is without doubt that in the word “marlborom” the trademark of the Complainant catches the eye. The same is true for the assessment of the similarity from a phonetic perspective. When one pronounces the word “marlborom” one clearly perceives the word of which the trademark of the Complainant consists, namely “marlboro.” The Panel is of the opinion that in view of what is said before, the disputed domain name should be considered confusingly similar to the Complainant’s trademark. Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First of all, the Respondent makes a commercial use of the disputed domain name by providing links to various web hosting services. The Complainant believes that the Respondent receives revenues when Internet users click on those links. Although the latter has not been established, it is a fairly common practice and above all it has not been contested by the Respondent. The Complainant shows that the Respondent has not been commonly known under the disputed domain name or has otherwise acquired any rights in the disputed domain name. Furthermore, the Complainant mentions that the Respondent has not received any license, authorization, or consent - express or implied - to use the trademark MARLBORO in a 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. In addition, the WhoIs record associated with the disputed domain name does not identify the Respondent by name as “marlborom.com”. The Respondent did not present any allegations or evidence of rights or legitimate interests it might have in the disputed domain name. In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith The Panel is furthermore of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls that the trademark MARLBORO is a famous trademark and was used and registered long before the disputed domain name was registered. The Panel is of the opinion that at the time of the registration of the disputed domain name, the Respondent had knowledge of the Complainant’s well-known trademark MARLBORO which follows from the fame this trademark enjoys. It is therefore inconceivable that the Respondent was not aware of the trademark when he registered the disputed domain name and started using it. What the Respondent does is attracting consumers for commercial gain by using a domain name that is clearly similar to the famous trademark of the Complainant. This shows the bad faith intent of the Respondent. The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met. 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 <marlborom.com> be transferred to the Complainant. Charles Gielen Sole Panelist Date: August 19, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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