Westmore · UDRP DecisionChuymarlboro.com
The Panel ordered transfer of <chuymarlboro.com>. It found the domain confusingly similar to the Complainant’s MARLBORO mark because it incorporated the mark in full and the addition of the geographic term “Chuy” did not eliminate confusing similarity. The Respondent lacked rights or legitimate interests because the Complainant made an unrebutted prima facie case and use for sponsored links was not bona fide in the circumstances. Bad faith was established from the well-known, century-old mark, the Panel’s finding that the Respondent was aware of it, and use of the domain to attract users to a sponsored-links website. The Panel did not rely on the Complainant’s malware allegation because the screenshots did not establish it.
The timeline behind chuymarlboro.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates that adding a geographic term to a well-known mark does not avoid confusing similarity when the mark remains fully recognizable. It also shows that a panel may establish bad faith from the mark’s long-standing fame and monetized sponsored-link use even where a more serious allegation, such as malware, is not proven.
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. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings Case No. D2017-0196 1. The Parties The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States. The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, the Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Plurinational State of Bolivia. 2. The Domain Name and Registrar The disputed domain name <chuymarlboro.com> is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2017. On February 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2017. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2017. The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 21, 2017. 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 manufactures, markets, and sells cigarettes in the United States and numerous other countries. The Complainant owns the trademark MARLBORO registered in 1908 under number 68,502 in the United States. The Complainant has also registered domain names that incorporate its MARLBORO trademark. The disputed domain name was registered on August 24, 2016. The disputed domain name resolves to a website with sponsored links. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns the trademark MARLBORO, which is considered a world-wide famous trademark. The trademark MARLBORO is registered in many countries including the United States. In fact, the registration of the trademark MARLBORO as a word-mark dates back to 1908. The Complainant has also registered domain names that include the trademark MARLBORO. The Complainant contends that the disputed domain name incorporates the trademark of the Complainant in its entirety and that this will lead consumers to believe that it is associated with the Complainant or maintained by it. The Complainant contends that incorporating a trademark in its entirety renders a domain name confusingly similar to the trademark itself and that adding the generic Top-Level Domain (“gTLD”) “.com” is irrelevant as it should not be taken into consideration when assessing confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated with the Complainant in any manner. The Respondent was never known by a name that incorporates “marlboro” and the Complainant never authorized the use of the trademark MARLBORO. Furthermore, there is no evidence of the Respondent’s use of or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the trademark of the Complainant in order to divert Internet traffic to its site. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name in bad faith knowing of the Complainant’s rights in the trademark MARLBORO as it existed more than a century before the registration of the disputed domain name. Furthermore, the Respondent has a constructive notice of the Complainant’s trademark through the trademark registration and a simple online search would have revealed the existence of MARLBORO and the Complainant’s rights therein. The Complainant contends that the Respondent is using the disputed domain name in bad faith as it is using the Complainant’s trademark to divert Internet users to its website and is using the disputed domain name for commercial gain. In addition, the website to which the disputed domain name resolves contains malware. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns the trademark registration number 68,502 for the trademark MARLBORO, registered in 1908 in the United States. The Panel is satisfied that the Complainant has established its ownership of the trademark MARLBORO. The disputed domain name comprises the Complainant’s trademark MARLBORO combined with the word “Chuy”. The fact that the disputed domain name contains the trademark MARLBORO in its entirety is sufficient in the Panel’s view to create confusing similarity. As for the term “Chuy”, it is the name of a city in Uruguay. The Panel is of the view that adding the word “Chuy” does not in any manner eliminate confusing similarity. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. The Respondent’s use of the disputed domain name for a website displaying sponsored links does not, in the present case, amount to a bona fide offering of goods and services. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The element of bad faith is evidenced by the fact that the trademark MARLBORO has been registered and has been in use for over a century. This is further evidenced by the fact that MARLBORO is a well-known trademark which not only smokers are familiar with but also non-smokers. Hence, it must be that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting Internet users to its website. The Complainant contends that the disputed domain name resolves to a website that contains malware and that users are prompted to call a phone number to help remove the virus. The screenshots submitted in evidence by the Complainant do not show whether this is indeed the case. The Panel visited the website to which the disputed domain name resolves. It appears that the website has what seem to be sponsored links for variety of offers. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy. It is the Panel’s view that the Respondent has been using the disputed domain name in bad faith. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 names, <chuymarlboro.com>, be transferred to the Complainant. Nayiri Boghossian Sole Panelist Date: March 27, 2017
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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