Marlboro Wins WIPO Domain Dispute
The world famous cigarette brand, Marlboro, managed to easily win a WIPO concerning 2 domain names, marlboro-carton.com and marlboroscarton.com, that tried to profit from the “Marlboro” trademark. The Marlboro trademark has been active since 1908 (for cigarettes). On June 22nd The World Intellectual Property Organization (WIPO) ordered the transfer of the 2 domain names back to Marlboro.
According to Marlboro their trademark is globally known and its rights in the mark clearly predate the respondent their registration of the disputed domains. Marlboro also claims that the disputed domains are confusingly to its trademark and the respondent has no rights or legitimate interests in those domains.
The respondent didn’t bother to reply.
Sole panellist Nicholas Weston decided that the evidence that the respondent registered and has used the disputed domain names in bad faith is overwhelming.
The trademark ‘Marlboro’ is so famous a mark for cigarettes that it would be inconceivable that the respondent might have registered the mark without knowing it. The respondent registered the disputed domain names more than a century after the complainant established trademark rights in the Marlboro mark – Panellist Nicholas Weston
Nicholas Weston further stated the following:
In this case, the complainant has a well-known trademark, no response to the complaint has been filed, and the registrant’s identity was initially concealed by WhoisGuard Protected … This panel regards such conduct as prima facie evidence of bad faith in absence of a response.
Of course that statement doesn’t mean that using WHOIS privacy automatically equals evidence of bad faith. In this particular case it’s more about the sum of the parts. According to the WIPO Overview 2.0 this is what has been said about this matter:
Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.