Philip Morris smokes reseller in cybersquatting dispute

In Philip Morris Inc v Tsypkin, a World Intellectual Property Organization (WIPO)
panel has ordered the transfer of 'discount-marlboro-cigarettes.com'. The panel found that the registrant was not using the domain name to resell only Marlboro cigarettes by reference to the MARLBORO mark, but was also trading on the fame of the mark to resell the products of Philip Morris's competitors.

Philip Morris is the owner of the MARLBORO mark, which is registered throughout the world. The company initiated Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings when it discovered that Alex Tsypkin had registered the domain name 'discount-marlboro-cigarettes.com' to front a website selling genuine Marlboro cigarettes at discount prices. Significantly, the website also offered for resale cigarettes made by competitors of Philip Morris.

In his defence, Tsypkin argued that he had rights and a legitimate interest in the domain name because he lawfully sold Marlboro cigarettes. In support of his argument, he cited (among other cases) Daimler Chrysler AG v Donald Drummonds in which the respondent sold parts from Mercedes vehicles under the domain name 'mercedesshop.com'. The panel in that case accepted that:

"it would be difficult, if not impossible, for the respondent to avoid altogether the use of the word 'Mercedes' [...] which is the normal term which, to the public at large, signify the complainant's cars."

The panel easily concluded that the domain name was confusingly similar to the MARLBORO mark. Applying the UDRP (Paragraph 4), it also found that Tsypkin had no rights or legitimate interest in the domain name. Although the panel accepted that in principle it is not an infringement of a trademark to resell genuine trademarked goods by reference to the mark without the authority of the owner, it was guided by the decision in Oki Data Americas Inc v ASD Inc in which a WIPO panellist concluded that to be bona fide the offering must meet several minimum requirements, including that the registrant must use the website to sell only the trademarked goods.

In the current case, the panel felt that because Tsypkin was not using the domain name to resell only Marlboro cigarettes, but was also trading on the fame of the MARLBORO mark to resell the products of the trademark owner's competitors, Tsypkin's use of the mark was not bona fide. Accordingly the panel was satisfied that Tsypkin had created a likelihood of confusion with the MARLBORO mark, which was evidence of bad-faith registration and use of the disputed domain name. Thus, the panel ordered that the domain name be transferred to Philip Morris.

Linda Gibbons, Hammonds, London