WIPO | Philip Morris USA wins right over disputed domain name registered with ‘GoDaddy.com’ as it was confusingly similar to their trademark and was being used in bad faith

World Intellectual Property Organization: M. Scott Donahey (Panelist) transferred the disputed domain names to Philip Morris USA Inc. as these were confusingly similar to their trademark.

Philip Morris USA Inc., manufacturer and marketer of cigarettes and related tobacco products, began doing business under the mark ‘MARLBORO’ in 1883. It was registered as their trademark with the United States Patent and Trademark Office on 14-04-1908. They also registered the domain names ‘marlboro.com’ and ‘marlboro.net’, the former of which resolves to Complainant’s primary location on the Internet at which it promotes its trademarked products and services. The respondent registered the disputed domain names on 14-07-2019. The disputed domain names ‘marlborohempcigarettes.com’ and ‘marlborohempprerolls.com’ were registered with ‘GoDaddy.com’

The complainants filed a complaint with the WIPO Arbitration and Mediation Center (Center) on 02-08-2019. The Center upon receiving this complaint requested the Registrar to verify the disputed 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”). They notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2 and 4, and the proceedings commenced on 13-08-2019. In accordance with the Rules, paragraph 5, the due date for Response was 02-09-2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default the next day. M. Scott Donahey was appointed as the sole panelist in this matter on 16-09-2019 to ensure compliance with the Rules, paragraph 7.

The complainant contended the following:

  • The disputed domain names were confusingly similar to their trademark in that they each contain the distinctive and famous MARLBORO mark together with other common English words,
  • Respondent had no rights or legitimate interests in respect of the disputed domain names,
  • Respondent has registered and is using the disputed domain names in bad faith.

The respondents did not reply to any of the above contentions.

The panel ordered that the disputed domain names, ‘marlborohempcigarettes.com’ and ‘marlborohempprerolls.com’, should be transferred to the complainant in accordance with paragraphs 4(i) of the Policy and 15 of the Rules. They discussed the following to come to this conclusion:

Identical or Confusing Similarity: Each of the disputed domain names had complainant’s distinctive and famous MARLBORO mark. One of the disputed domain names also included the English words “hemp” and “cigarettes,” while the second of the disputed domain name included the English words “hemp” and the fanciful English word “prerolls.” Domain names, which incorporate English language trademarks and/or service marks together with English words, are confusingly similar to the trademarks they incorporate. Accordingly, the Panel was of the view that the disputed domain names were in fact confusingly similar to Complainant’s MARLBORO trademark and service mark.

Rights or Legitimate Interests: While the overall burden of proof in UDRP proceedings falls on the complainant, the panel was of the view that it may result in “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In the present case, the complainant had alleged that the respondent had no rights or legitimate interests in respect of the disputed domain names and the respondent also failed to assert any such rights. Accordingly, the Panel held that the respondent had no rights or legitimate interests in respect of the disputed domain names.

Registered and Used in Bad Faith: The respondent had been using the disputed domain names to resolve to inactive web sites. The Panel could not conceive any reason as to why a website that could be created to legitimately use the disputed domain names. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 determined that in such a case, the disputed domain names can be said to have been registered and used in bad faith. Accordingly, the Panel held that the disputed domain names were registered and were being used in bad faith.[Philip Morris USA Inc. v. Irving Herrera, Case No. D2019-1853, decided on 16-09-2019]

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