Domain Dispute Seems To Show Plight Of The ‘Little Guy’ In A Corporate System

A recent cybersquatting case processed under the World Intellectual Property Organization internet domain dispute procedures offers a possible glimpse of the plight of ordinary internet users in a global system dominated by large companies and their legal teams.

According to the 29 September decision document, the case involved registration early this year of the domain name “marlboro-m.com” by an individual in the village of Sussex, Wisconsin (US, population 10,000). The Marlboro tobacco company through its top-shelf law firm pounced on it as soon they became aware of it a few months later.

The respondent who registered the name “did not submit a formal Response to the Complaint but sent an email communication on August 6, 2014, which has been accepted by the Panel,” the document states.

That plain-spoken communication reads, in its entirety, as follows:

“I would like to start off by saying that this domain name was never purchased in “bad faith” as the complainant says. We purchased this domain name in order to start a legitimate business for our children. While the purchased domain name does have the Marlboro name in it we never intended to use it for anything associated with Phillip (sic). Morris, their trademark logos, or tobacco related products at all. We are a small family and have no history of purchasing domain name in bad faith. We are currently making no money off of links from this domain name (it is currently parked by GoDaddy and if anyone is making money off of links from this site it is them) and have also not tried to resell it to anyone else like the complainant states. I believe that we were well within our rights to purchase this domain name. All being said, after being advised by my counsel, we will forfeit our rights to the domain name. We were advised that even though we were well within our rights to purchase said domain name that Phillip (sic) Morris would not stop there. Their large pockets will make it absolutely impossible to win this case in the long run. We cannot afford to take this to federal court and therefore we will forfeit the domain name now before it gets to that point. I would also like it to be known that had Philip Morris just contacted us from the very beginning we likely could have avoided all of this. I am saddened by the fact that their “procedure” is to treat everyone as if they are a criminal doing something wrong without speaking to them in the first place. Once again we are forfeiting our rights to “www.marlboro-m.com” as of today even though we were well within our rights to purchase it.

I thank you for your time,”

Nowhere in the decision document does it appear to state what the registrant actually did intend to do with the website or why they would have chosen that name. The Marlboro company argued that the registrant intended to profit from its famous name.

Predictably, the panellist (WIPO domain dispute panels are typically one person) ran the response against a series of tests and handed the domain name to the Marlboro company, finding that despite the homespun defence it could not rule out bad faith.

The panellist wrote:

“The Complainant [Marlboro] essentially asserts that, given the fame of the MARLBORO trademark, the Respondent can only have registered the disputed domain name with knowledge of the Complainant’s rights. This very plausible assertion is not denied by the Respondent whose communication states that “we never intended to use [the Marlboro name] for anything associated with Phillip (sic) Morris, their trademarked logos, or tobacco products at all.” Respondent thus all but admits its pre-registration awareness of the Complainant and its rights, and seeks to provide an excuse in the hope of legitimizing its use of the disputed domain name. Although the Respondent claims “we were within our rights to purchase” the disputed domain name, it does not indicate for what specific purpose it would be using that domain name, or how that purpose could be legitimate and in good faith in light of its awareness of the Complainant’s extensive prior rights. The unexplained assertion that the Respondent did not intend to sell tobacco products, even if true, also does not demonstrate good faith on the part of the Respondent. It is well established that the use of another’s trademark to attract internet users for commercial gain is a bad faith use, and this can be true even if the products sold or offered do not compete with those of the Complainant.

In the instant case the disputed domain name leads to a genre of “pay per click” site offering a variety of goods and services, including the sale of domain names. The use of the disputed domain name to attract users to such a site is a bad faith use under the Policy. The Respondent’s assertion that the disputed domain name is “parked” and “we are not currently making money off of the links from this domain name” is not a refutation of the evidence of bad faith use. Even were the disputed domain name “parked”, it is well established that on facts such as are present here a passive use can be in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. In short, although the Respondent’s self-serving communication seeks to deny bad faith registration and use it provides no clear explanations, nor any evidence, to rebut the evidence and circumstances that point to such bad faith.

The Panel accordingly finds that the disputed domain name was both registered and used in bad faith.”

For its part, Marlboro’s website, marlboro.com, is a restricted website which may be accessed only by smokers 21 years old and older.

It might be noted that a quick web search of the term “marlboro” shows there is a town in New Jersey, and in Maryland, a college in Vermont, and a music festival in that name. At least for now.