Decisión del Panel Administrativo nº D2020-2218 of Tribunal Arbitral de la OMPI, October 14, 2020 (case Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1247452451 and 1247452423 / Mary Atlas)
|Defense:||Contact Privacy Inc. Customer 1247452423 and 1247452451 / Mary Atlas|
|Resolution Date:||October 14, 2020|
|Issuing Organization:||Tribunal Arbitral de la OMPI|
The Complainant is Philip Morris USA Inc., United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1247452451 and 1247452423, Canada / Mary Atlas, United States.
The disputed domain names [marlborofilter.com] and [marlboroice.info] are registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2020, 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 for the disputed domain names. The Registrar in a subsequent communication informed the Center that the language of the registration agreement was Malay.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. In view of the language of the registration agreement, the Respondent was notified in English and Malay, and the due date for Response extended to October 9, 2020, as provided in Procedural Order No. 1, issued October 2, 2020. The Respondent did not submit any response.
The Center appointed William R. Towns as the sole panelist in this matter on September 24, 2020. 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 and sells tobacco products, including cigarettes sold under the MARLBORO trademark. The Complainant has used the MARLBORO mark with tobacco and cigarettes since as early as 1883, and obtained its first United States registration for the MARLBORO mark on April 14, 1908 (U.S. Reg. No. 68502). The Complainant has since obtained numerous trademark registrations for the MARLBORO mark issued by the United States Patent and Trademark Office (“USPTO”), including U.S. Reg. Nos. 4171817 and 5379044, registered on July 10, 2012, and January 16, 2018, respectively.
The Complainant’s MARLBORO mark is well known and consistently has been recognized by UDRP panelists as a famous mark. See, e.g., Philip Morris USA, Inc. v. Michele Dinoia, SZK.com,[WIPO Case No. D2005-0171]; Philip Morris USA Inc. v. PrivacyProtect.org / Nicola Pieropan,[WIPO Case No. D2011-1735]; Philip Morris USA Inc. v. Domain Admin, Whois Privacy Corp.,[WIPO Case No. D2017-2452]; and Philip Morris USA Inc. v. Contact Privacy Inc. / Stephanie Sutton,[WIPO Case No. D2019-3073].
The disputed domain names were registered on June 12, 2020, according to the Registrar’s WhoIs records. The disputed domain names do not appear to be associated with any websites.
As noted, the language of the registration is Malay and by default the language of the proceeding. However, the Complainant submitted the Complaint in English.
The Complainant submits that the disputed domain names are identical or confusingly similar to the Complainant’s MARLBORO mark. The Complainant remarks that MARLBORO is a well-known and famous mark. The Complainant maintains that the descriptive words “filter” and “ice” as reflected in the disputed domain names, do not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark. The Complainant further observes that “filter” and “ice” refer to the Complainant’s cigarette brands specifically called “Marlboro Filter” and “Marlboro Ice”.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondent is neither sponsored by or affiliated with the Complainant in any capacity, and does not have permission from the Complainant to use the MARLBORO mark. According to the Complainant, absent such license or permission no actual or...
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