The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“USA” or “US”), represented by Arnold & Porter Kaye Scholer LLP, USA.
The Respondent is Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, USA / Name Redacted of Richmond, Virginia, USA.1
The disputed domain name <philipmorrisonusa.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2017. On April 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. At the Complainant’s request, the administrative proceeding was suspended on May 1, 2017. The Complainant filed an amended Complaint on May 11, 2017, and the administrative proceeding was reinstituted on May 12, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 13, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a business corporation organized under Virginia law and headquartered in the Commonwealth of Virginia, USA. Altria Group, Inc., the Complainant’s parent company, is a publicly traded company listed on the New York Stock Exchange. A leading producer of tobacco products (with 2014 revenues of USD 21 billion), the Complainant has been known by the company and trade name “Philip Morris” for more than a century. The Complainant owns several domain names incorporating that name, such as <philipmorris.com>, that redirect Internet users to its parent company’s website at “www.altria.com” (the “Complainant’s website”). The Complainant’s website publishes information about the “Philip Morris USA” company and advertises its products.
The Complainant manufactures and sells tobacco products under individual brand names that are typically trademarked. But the record also includes substantial evidence that the Complainant’s company name Philip Morris USA and trade name “Philip Morris” are widely associated with tobacco products in the US, even though the Complainant has not obtained trademark registration for the name “Philip Morris”. The record includes examples of media articles from 2007 to 2014 referring to the Complainant as the largest US tobacco company or as the maker of America’s best-selling cigarettes. Further, the Panel notes that the Complainant’s trade name commonly appears in product labelling and advertising, along with the individual brand names.
The Domain Name was registered on November 12, 2016, using a domain privacy service. When apprised of the original Complaint filed in the current UDRP proceeding, the Registrar identified the registrant as an individual in Richmond, Virginia, USA. This is evidently a fraudulent misidentification by the unknown person who actually registered the Domain Name, who shall be referred to hereafter as the Respondent. The name given by the Respondent at that time is that of the Complainant’s president and CEO, and the postal address given for the registrant is the address of the Complainant’s headquarters. However, the email address given in the contact details for the registrant does not belong to the Complainant, and the telephone number is not genuine; it does not even include the correct area code for Richmond, Virginia.
To date, it does not appear that the Domain Name has been used for an active website. It resolves at the time of this Decision only to an error message.
The Complainant asserts protectable trademark rights in its unregistered “Philip Morris” trade name and contends that the Domain Name is confusingly similar.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and evinces bad faith by misdirecting Internet users with a Domain Name confusingly similar to a famous name used as a mark, for no plausible legitimate purpose, hiding behind a privacy service, false or fraudulent registration details, and identify theft.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Policy does not require a registered trademark, but an unregistered mark must be shown to have acquired distinctiveness as an identifier that consumers associate with the complainant’s goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
The Complainant cites other UDRP decisions finding that the “Philip Morris” name has become such a distinctive and well-established identifier of the Complainant’s tobacco products. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840 (“the term ‘Philip Morris’ has become uniquely associated with and distinctively identifies the Complainant and its tobacco products”). This Panel concurs, given the Complainant’s long-term use of the “Philip Morris” corporate and trade name in a trademark sense, in advertising, labeling, media, and online in connection with its tobacco products in the US marketplace. Consequently, this Decision will refer hereafter to PHILIP MORRIS as the Complainant’s mark.
The Domain Name is similar to the Complainant’s mark, incorporating the distinctive portion in its entirety (without the space that cannot appear in URLs in the Domain Name System), transforming the portion of the string based on the English surname “Morris” to one based on a slightly different version, “Morrison”, and adding the letters “USA” that commonly serve as a geographic abbreviation for “United States of America”. The changes are not sufficient to avoid confusion, especially given that the Complainant’s corporate name includes “USA” after “Philip Morris”.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview 3.0, section 1.2. Having found that the Complainant has demonstrated rights in an unregistered PHILIP MORRIS trademark, the Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies any association with the unknown Respondent, who deceptively misidentified itself as the Complainant’s own CEO. The Respondent has not come forward with any asserted rights or legitimate interests in the Domain Name. There is no evidence in the record of a bona fide commercial or noncommercial use of the Domain Name, nor proof that the Respondent has been known by a corresponding name. The Panel concludes, therefore, that the second element of the Complaint is established.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. These circumstances are not apposite here, as the Respondent has not yet, for instance, made use of the Domain Name for an active website or contacted the Complainant.
Nevertheless, many UDRP panels have observed that the examples in paragraph 4(b) are not exclusive and that bad faith may be found in the light of “all the circumstances” of a case, even where the registrant has not yet made active use of the domain name. This is often termed the “passive holding” doctrine, as articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See WIPO Overview 3.0, section 3.3.
The passive holding doctrine is well suited to the current proceeding, as the record is replete with indicia of bad faith. The Complainant’s mark is well known and long established. Its trademark value is compelling, compared to any theoretical value it might have in referring to an individual who happened to have the same name. The addition of “USA” to the string in the Domain Name highlights the evident attempt to mimic the Complainant, which uses “USA” in its own name. As in Telstra Corporation Limited v. Nuclear Marshmallows, supra, it is difficult to imagine any legitimate reason for selecting the Domain Name. Rather, its potential value appears to lie in misdirecting Internet users or extorting a purchase from the Complainant. Further, the Respondent’s conduct in using a domain privacy service and then fraudulently identifying itself as the Complainant’s CEO reflects bad faith. Rather than stepping up to assert rights or legitimate interests in the Domain Name, the Respondent’s reaction to this proceeding has been silence – a contemptuous gesture in addition to the identity fraud.
In these circumstances, the Panel finds sufficient evidence of bad faith in the registration and use of the Domain Name to satisfy the requirements of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <philipmorrisonusa.com> be transferred to the Complainant.
W. Scott Blackmer
Date: June 26, 2017
1 The Respondent appears to have used the name of the Complainant’s president and chief executive officer (“CEO”) in the registration of the disputed domain name. In light of this potential identity theft, the Panel has redacted the Respondent’s name from the caption and body of this Decision. Attached as Annex 1 to this Decision is the Panel’s instruction to the Registrar regarding transfer of the disputed domain name, including the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to this Decision shall not be published due to the circumstances of this case.