Westmore · UDRP DecisionMarlboro-iceblast.com
The Panel ordered transfer of <marlboro-iceblast.com>. It found the domain confusingly similar to the Complainant’s MARLBORO mark, found no rights or legitimate interests because the Respondent lacked authorization and offered no evidence of bona fide use or being commonly known by the domain, and found bad faith because the domain combined the famous MARLBORO mark with wording associated with the Complainant’s “Marlboro Ice” product. The domain’s failure to resolve to an active website did not prevent the bad-faith finding.
The timeline behind marlboro-iceblast.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates how a domain combining a famous mark with product-related wording can support both confusing similarity and an inference of deliberate targeting. It also demonstrates that non-use of a domain does not necessarily defeat bad faith where the domain’s composition and the mark’s reputation make an innocent explanation implausible.
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. Contact Privacy Inc. Customer 1242479878 / Arielle Aldama Case No. D2018-1292 1. The Parties The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden. The Respondent is Contact Privacy Inc. Customer 1242479878 of Toronto, Ontario, Canada / Arielle Aldama of Sacramento, California, United States. 2. The Domain Name and Registrar The disputed domain name <marlboro-iceblast.com> is registered with Google Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2006, 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 June 13, 2018 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 June 18, 2018. 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 June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Center received an email communication from the Respondent on July 3, 2018. The Center invited the Parties to explore settlement negotiations on July 3, 2018, and the Complainant requested suspension of the proceeding on July 6, 2018. The proceeding was suspended on July 6, 2018 and reinstituted at the request of the Complainant on July 17, 2018. Accordingly, the Response due date was extended until July 22, 2018. The Respondent did not submit any Response or further communication. Accordingly, the Center notified the Parties on July 24, 2018 that it would proceed to panel appointment. The Center appointed William F. Hamilton as the sole panelist in this matter on July 31, 2018. 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 is the owner of numerous trademark registrations in the United States Patent and Trademark office for the mark MARLBORO (the “Mark”) dating back over a century. The Complainant has heavily invested in the promotion of the Mark and its association with its tobacco products. See, e.g. , Philip Morris USA Inc. v. ICS Inc. , WIPO Case No. D2013-1306 (“… the MARLBORO trademark is famous worldwide.”). The Complainant has also registered the domain name <marlboro.com>. The disputed domain name was registered on April 4, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by adopting the Mark in its entirety followed by a generic term. The Complainant asserts that the Respondent has no rights or legitimate interest in the Mark or the disputed domain name, and that the disputed domain name was registered in and used in bad faith to attract unsuspecting Internet users to the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name incorporates the entire Mark and merely appends to the Mark the term “ice blast” (without a space between the word). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on the assessment of the second and third elements. See section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with any permission or license to use the Mark or the disputed domain name. The Respondent has not come forth to demonstrate any bona fide activities or business associated with the Mark or the disputed domain name. There is no evidence or indication that the Respondent was ever commonly known by the disputed domain name. Sportswear Company S.P.A. v. Tang Hong , WIPO Case No. D2014-1875 . The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name was registered and used in bad faith. It strains credulity to believe that the Respondent happened by chance to compose and register the disputed domain name that fully incorporates the Complainant’s famous Mark and the brand name of one of Complainant’s products, “Marlboro Ice” (a specialized tobacco product offered by the Complainant). “The only feasible explanation for the Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . That the disputed domain name does not resolve to an active website is immaterial to this finding of bad faith registration and use. 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 <marlboro-iceblast.com> be transferred to the Complainant. William F. Hamilton Sole Panelist Date: August 5, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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