WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Arik Casden
Case No. D2014-0687
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Arik Casden of Beverly Hills, United States of America, self-represented.
2. The Domain Names and Registrar
The disputed domain names <parliamentmariuana.com>, <parliamentmariuanausa.com>, <parliamentmedicalmariuana.com> and <parliamentmedicalmariuanausa.com> (the "Disputed Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2014. On April 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 5, 2014 the Complainant submitted an amended Complaint to the Center.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Center granted the Respondent an extension until June 9, 2014 to file a Response. The Center notified the parties of the Respondent's default on June 10, 2014. The Response was filed with the Center later on the same day.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 16, 2014. 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.
4. Factual Background
The Complainant is Philip Morris USA Inc., a corporation incorporated in the Commonwealth of Virginia, with its principal place of business at 6601 West Broad Street, Richmond, Virginia. The Complainant owns the well-known cigarette brand PARLIAMENT, and has been selling Parliament brand cigarettes since 1931. The trademark PARLIAMENT was registered in the United States on June 4, 1940 (Registration No. 378,340), and is owned by the Complainant.
The Disputed Domain Names are registered to the Respondent Arik Casden, of California, United States. The Disputed Domain Names were registered to the Respondent on January 26, 2014. The Disputed Domain Names host websites with links to one or more websites that advertise various goods and services or provide information.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Names each contain the PARLIAMENT trademark owned by the Complainant. The Complainant contends that it has spent substantial time, effort, and money advertising and promoting the PARLIAMENT trademark throughout the United States, and has thus developed substantial goodwill in the PARLIAMENT trademark. The Complainant further contends that through such extensive efforts, the PARLIAMENT trademark has become distinctive and famous.
The Complainant contends that the Disputed Domain Names are confusingly similar to the PARLIAMENT trademark because they each incorporate the PARLIAMENT trademark in its entirety, and the addition of generic top level domains is irrelevant.
The Complaint contends that the Respondent has no legitimate interests or rights in the Disputed Domain Names because the Respondent has no connection or affiliation with the Complainant, or the products marketed and sold by the Complainant under the PARLIAMENT trademark. The Complainant contends that the Respondent chose to use the PARLIAMENT trademark to draw Internet users to his pay-per-click websites by capitalizing on the association of the PARLIAMENT trademark.
The Complainant contends that the Respondent has registered and is using the Disputed Domain Names in bad faith and with full knowledge of the PARLIAMENT trademark. The Complainant contends that the Respondent has used and is using the PARLIAMENT trademark to lure Internet users to his websites, which include directory sites and pay-per-click advertisements, and that this is manifestation of the Respondent's bad faith. Additionally, the Complainant contends that the Respondent's use of the PARLIAMENT trademark with reference to "mariuana" – a misspelling of "marijuana," which is an unlawful substance in the United States – tarnishes the PARLIAMENT trademark.
Based on the Panel's ruling below, the Response was not considered.
6. Discussion and Findings
A. Procedural Matter: Late-Filed Response
The first issue is whether the Panel will consider the administratively deficient Response of June 10, 2014. Under the Rules, the admissibility of evidence (e.g., whether a late-filed response will be considered), is solely within the discretion of the Panel. See Paragraph 10(a) and (d) of the Rules; see also the WIPO Notification of Complaint and Commencement of Administrative Proceeding document at paragraph 6 ("The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by the Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate."). Paragraph 14(a) of the Rules provides: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules […], the Panel shall proceed to a decision on the complaint."
Whether a response filed late is admissible has been raised a number of times in previous cases. See, e.g., Oficiul National al Registrului Comertului v. Kurtyan Consulting S.r.l., WIPO Case No. DRO2004-0001; 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033. Many panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and respondents will regularly submit late responses. The Panel agrees with those precepts. In the instant case, in addition to granting the Respondent an extension of time to file a response, the Center provided the Respondent with repeated notice and information about this proceeding including repeated notifications about the deadline for filing a response and the procedures for responding, yet the Respondent failed to respond on time or show "good cause" why he was not able to respond timely. Accordingly, the Response will not be considered.
Moreover, the Response does not contain the certification required by paragraph 5(b)(viii) of the Rules. The Response has not been signed by the Respondent or its authorized representative, as required by paragraph 5(b)(viii) of the Rules. Similar situations were addressed in Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 and InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075. In Talk City, the panel stated:
"After considering Respondent's February 16 e-mail, the Panel has concluded that it will not accord any weight to the facts alleged in it. That is because Respondent's e-mail did not contain any certification that the information contained in the e-mail was, 'to the best of Respondent's knowledge complete and accurate.' Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted discretion to consider late responses, it is not granted similar discretion to waive the Rule 5(b)(viii) certification requirement."
Thus, in accordance with paragraphs 10 and 14 of the Rules, the Panel decides not to consider the late Response. The Panel notes, however, that even if it would have taken into account the late Response, it would not have affected the findings the Panel has made in this case.
B. Policy Requirements
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of a disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent's domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
C. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
First, it is uncontroverted that the Complainant has established rights in the PARLIAMENT trademark based on both longstanding use as well as its federal trademark registration in the United States. Second, the Disputed Domain Names consist of the PARLIAMENT trademark in its entirety. "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Indeed, numerous panels have held that a domain name is confusingly similar to a trademark where, as in this case, the domain name incorporates the trademark in its entirety. In an earlier case involving the Complainant, a panel found that "marlboro" combined with the name of a color to form a second level domain name was confusingly similar to the MARLBORO trademarks. Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675 (ordering transfer of domain name <marlboroblack.com>).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Moreover, the Respondent has not registered the Disputed Domain Names with a bona fide intent as the Respondent is not a licensee of the Complainant with regard to the trademark rights or the right to register the Disputed Domain Names. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use its PARLIAMENT trademark within the Disputed Domain Names and therefore the Respondent is not able to establish rights or legitimate interests in the Disputed Domain Names. Mere registration of the Disputed Domain Names may not of itself confer rights or legitimate interests in the Disputed Domain Names (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensee of the Complainant and is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, using the Disputed Domain Names in order to intentionally attempt to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his websites or of a product or service on those websites or locations.
The Panel accepts the arguments of the Complainant that the Disputed Domain Names were registered and are being used in bad faith as they are used to attract Internet users to websites that contain directory sites and pay-per-click advertisements. There is no doubt that the Respondent knew or should have known about the Complainant's trademark rights before registering the Disputed Domain Names. Such use of the Disputed Domain Names is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's trademark is evidence of bad faith. See, e.g., Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated, WIPO Case No. D2004-0752). Similarly, the registration of a confusingly similar or identical domain name in order to misdirect Internet users or display links to third-party commercial websites, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Hanover Communications Ltd., v. Maison Tropicale, S.A., WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited, WIPO Case No. D2007-0883.
Finally, the Panel agrees with the Complainant that the Respondent's use of the PARLIAMENT trademark with reference to "mariuana" – a misspelling of "marijuana," which is an unlawful substance in the United States – tarnishes the PARLIAMENT trademark and is further evidence of the Respondent's bad faith.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that that the Disputed Domain Names have been registered and used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <parliamentmariuana.com>, <parliamentmariuanausa.com>, <parliamentmedicalmariuana.com> and <parliamentmedicalmariuanausa.com> be transferred to the Complainant.
Andrew J. Park
Date: July 1, 2014