WIPO D2015-1128 · decided 11 September 2015
Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited
The parties
- Complainant
- Philip Morris USA Inc.
- Respondent
- Borut Bezjak, A Domains Limited
What did the panel find on each element?
| Policy paragraph | Finding |
|---|---|
| 4(a)(i) Identical or confusingly similar | The panel found marlboro.party confusingly similar to the MARLBORO trademark. The panel held that "party" is a generic word that does not change the overall impression of the dominant "marlboro" element. |
| 4(a)(ii) No rights or legitimate interests | The panel did not decide this element because it denied the complaint on bad faith, though it said the bulk geographic registration plan raised questions it left unresolved. |
| 4(a)(iii) Registered and used in bad faith | The panel found Philip Morris USA had not proved bad faith, because marlboro.party was one of hundreds of geographic domains and no evidence conclusively showed the respondent targeted the MARLBORO trademark. |
Why does Marlboro matter for a complaint today?
Philip Morris USA has held the MARLBORO trademark in the United States since 1908, and the panel still refused to transfer marlboro.party. The respondent showed a list of hundreds of domains named after towns and said an algorithm picked every town with more than 30,000 people. Several places are called Marlboro. The panel found no conclusive evidence that the respondent chose the domain for the trademark, and the website made only occasional and neutral references to Marlboro cigarettes. A famous mark does not win a UDRP case on its own when the domain also has an innocent meaning. You have to show the registrant targeted you, with evidence such as content about your products or an attempt to sell the domain at a price that does not fit the registrant's stated plan. The panel also said bulk registrants have "some level of responsibility" to keep trademark value out of their algorithms. Section 3.2.3 of the WIPO Overview 3.1 sets out that duty and cites this case. The limit: the panel said its finding was without prejudice to a court, and that later conduct by the respondent could matter if Philip Morris USA refiled.
What does the WIPO Overview 3.1 say?
The WIPO Overview 3.1 summarises how WIPO panels decide each issue. These sections cover the same point of law.
- Section 3.2.3: Willful blindness and the duty to search for and avoid trademark-abusive registrations The Overview cites this decision here.
- Section 2.14.2: Is the TLD under which a domain name is registered relevant in assessing respondent rights or legitimate interests? The Overview cites this decision here.
- Section 2.2: What qualifies as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services? The Overview cites this decision here.
Who decided the case?
A single panelist, Assen Alexiev, decided the case on 11 September 2015.
Read the decision
The full text is published by the WIPO Arbitration and Mediation Center. We summarise it here; the decision itself is the authority.
Summarised by Gergana Dimitrova, who worked at the WIPO Arbitration and Mediation Center from 2018 to 2021 and sits as a domain name panelist at the Czech Arbitration Court. Checked against the published decision on 23 October 2026. Full background.
Someone has taken a domain that uses your brand?
The first assessment is free and comes back within 24 hours. If the case is weak we say so rather than take the fee.