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Philip Morris, which owns the cigarette brand Marlboro, has lost a domain name dispute against a French national at the World Intellectual Property Organization (WIPO).
On March 11, WIPO’s Arbitration and Media Center dismissed the company’s claim that the domain name marlboro51.com infringed its trademark.
The decision was published yesterday, March 23.
Philip Morris filed the complaint on December 1, 2015. The domain name was registered in 2008.
The company claimed in the dispute that the respondent, Olivier Guerard, has no rights or legitimate interests in the domain name, that it is similar to its trademark for ‘Marlboro’, which the company first registered in 1908 for cigarettes, and that it was registered in bad faith.
Guerard argued that the name ‘Marlboro’ is “not only a brand” but also a city in New Jersey and that should exclude any risk of confusion.
He also said that the domain name matches a name used by him in car forums and is inspired by the film “Harley Davidson and the Marlboro Man”.
The website linked to the domain name consists of a favourites list of the forums that Guerard visits regularly and doesn’t link to shopping sites.
The defendant said he believes that the domain name was registered and is being used in good faith.
Panellist Philippe Gilliéron found that the domain name was confusingly similar, but dismissed the claim that Guerard had no rights or legitimate interests in it and had used it in bad faith.
According to Gilliéron, the defendant demonstrated that “he used for many years the pseudonym ‘marlboro51’ on discussion forums in the automotive field. The site linked to the disputed domain name aims to allow the defendant to more easily access the different forums where it is regularly active”.
Marlboro, domain name, WIPO, Philip Morris USA, trademark, Olivier Guerard, UDRP