Philip Morris USA has successfully transferred a domain name that deliberately played off its Marlboro brand of cigarettes to spread malware to internet users.
A decision published by the World Intellectual Property Organization’s Arbitration and Mediation Center showed control of the domain name ‘malboro.com’ has been handed to the tobacco company.
Philip Morris filed its complaint on March 2 this year targeting a respondent named only as “Protection Domain of Tumba Muerto”.
The respondent was notified on March 23, but it did not acknowledge the complaint.
Sole panelist Bernhard Meyer heard the dispute on April 28 and the judgment was published earlier this month.
Philip Morris has owned a trademark for ‘Marlboro’ since 1908 and has owned the domain marlboro.com since 2012.
According to the tobacco company’s complaint, the domain in dispute is confusingly similar to its mark and the respondent lacks any rights or interest in it.
The company claimed the respondent “intentionally created a confusingly similar domain” to attract internet traffic to its website, which would then spread malware.
To back up its claim Philip Morris’s complaint included screenshots of the website that allegedly warned users “the site ahead contains malware”.
In his decision Meyer found that the term “malboro” was an “obvious truncation or misspelling of the famous trademark Marlboro”.
He added that the respondent’s silence “manifests a lack of rights and legitimate interests in the domain name”.
“The sole purpose appears to have been to cause damage to internet users by spreading malware. Such behaviour clearly demonstrates respondent’s bad faith,” he added.
Marlboro, Philip Morris, domain name, malware, World Intellectual Property Organization’s Arbitration and Mediation Center, typosquatter