Decisión del Panel Administrativo nº D2015-0331 of WIPO Arbitration and Mediation Center, April 22, 2015 (case Philip Morris USA Inc. v. Hady Taniwan/ Personal)
| Resolution Date | April 22, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Hady Taniwan/ Personal of Medan, Sumatera Utara, Indonesia.
The disputed domain name [marlboroman.org] is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2015, 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 March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2015.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 13, 2015. 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.
The Complainant manufactures, markets, and sells cigarettes in the United States of America, including cigarettes under its famous MARLBORO trademarks. 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.
The Complainant is the registered owner of the following trademarks (the “MARLBORO Trademarks”), amongst others, on the Principal Register of the U.S. Patent and Trademark Office, which are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065:
MARLBORO Registration No.68,502, date registered April 14, 1908, goods: cigarettes;
MARLBORO and Red Roof Design Registration No. 938,510, date registered July, 25, 1972, goods: cigarettes.
True and correct copies of printouts of the registration certificates for these registrations have been provided to the Panel, together with printouts of updated status information for these trademarks.
The Complainant has spent substantial time, effort, and money advertising and promoting the MARLBORO Trademarks throughout the United States of America, and has thus developed substantial goodwill in the MARLBORO Trademarks. Through such widespread, extensive efforts, the MARLBORO Trademarks have become distinctive and are uniquely associated with the Complainant and its products.
Indeed, numerous previous WIPO administrative panels already have determined that the MARLBORO Trademarks are famous. See, e.g., Philip Morris USA Inc. v. ICS Inc.,[WIPO Case No. D2013-1306] (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”.); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W,[WIPO Case No. D2012-0660] (“Respondent creates a likelihood of confusion with the Complainant’s famous trademark and deprives the Complainant from offering its products to prospective clients”); Philip Morris USA Inc. v. Pieropan,[WIPO Case No. D2011-1735] (“finding that the Trademark [MARLBORO] is a well-known trademark worldwide as held by many other panels”).
In addition, to the MARLBORO Trademarks listed above, for over half a century, the Complainant has also made extensive use of a specific “Western” theme in connection with its famous MARLBORO brand cigarettes. This includes, among other things, images of a cowboy set against Western landscapes, i.e., the “MARLBORO COUNTRY Trade Dress”.
The Complainant’s consistent use of its MARLBORO COUNTRY Trade Dress has been recognized as one of the longest-running, single-theme marketing campaign in United States of America history.
Indeed, the terms “marlboro” and “cowboy” have become virtually synonymous. As described in an article published in Advertising Age, the Complainant’s long-standing use of western imagery is:
“[t]he most powerful . . . brand image of the century” and “stands worldwide as the ultimate American cowboy and masculine trademark, helping establish Marlboro as the best-selling cigarette in the world. . . [O]ne measure of this icon’s clout is that no matter how minimal the imagery gets . . . it still remains instantly evocative of a mythical Marlboro country, of a mythical American cowboy, and of the No. 1 brand of cigarettes.”
A true and correct copy of this article has been provided to the Panel.
See also Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379 (S.D.N.Y. 1995) (noting that “Philip Morris by its packaging and advertising of MARLBORO cigarettes has created an image of the American West made up of geographical (‘Marlboro Country’) and individualized (the cowboy as the ‘Marlboro Man’) components” that is “inherently distinctive”).
For many decades, the Complainant has used the MARLBORO trademark and variations thereof in connection with its tobacco and smoking-related products.
The Complainant markets its famous Marlboro cigarettes to age-verified adult smokers, 21 years of age or older, in various promotional materials including direct mail, Marlboro cigarette packs at retail, and online at “www.marlboro.com”.
The Complainant has registered the domain name [marlboro.com]. This domain name points to the Complainant’s website, “www.marlboro.com” (the “MARLBORO Website”), which, as noted above, enables access to information regarding the Complainant, MARLBORO-branded products, and special offers to age-verified adult smokers 21 years of age or older. True and correct printouts of the home page of the MARLBORO Website and the WhoIs record for the [marlboro.com] domain name have been provided to the Panel.
The Respondent registered the disputed domain name, which currently resolves to a blank page...
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