WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Peter Roussoniclos
Case No. D2014-1842
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("US"), represented by Arnold & Porter, US.
Respondent is Peter Roussoniclos of Deerfield Beach, Florida, US.
2. The Domain Name and Registrar
The disputed domain names <ecigsphilipmorris.com> and <philipmorrisecig.com> (the "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 October 21, 2014. On October 22, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On October 22, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On October 23, 2014, Complainant requested to add the domain name <altriaecig.com> to the present administrative proceeding and include Altria Group, Inc. as a second Complainant. However, Complainant withdrew this request on October 28, 2014.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2014. The Center received an informal e-mail communication from Respondent on November 5, 2014. Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on November 19, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 24, 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
Complainant, the largest tobacco manufacturer in the United States, has manufactured and sold cigarettes for more than a century. Among Complainant's leading cigarette brands are "Marlboro", "Parliament" and "Virginia Slims". Complainant has used its trade name "Philip Morris" for more than a century in conjunction with its tobacco products. In addition, Complainant maintains a website at "www.philipmorrisusa.com" which provides information about smoking and, to some extent, promotes the relative merits of its various cigarette products.
Respondent registered the Domain Names on June 9, 2014. The Domain Names are redirected to a website with the address "www.unovaporvip.com", at which vaping1 products are offered for sale.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements under the Policy required for a transfer of the Domain Name.
Respondent did not reply substantively to Complainant's contentions. Rather, on November 5, 2014, Respondent sent an e-mail to the Center stating that he chose "Alteria" for his "e-cigarette campaign." Alteria, he explained, refers to the Greek goddess of nudity, and "my nationality is Greek, and therefore I used that name in my marketing material." Respondent added that he intended to market e-cigarettes throughout Europe, and that "it will be clearly and duly noted within the contents of our website and marketing material as mentioned above that we have no affiliation with either of those companies [referring to Alteria affiliates Philip Morris and Kraft Foods]." After receiving a communication from by the Center on November 19, 2014, Respondent sent the Center a one-line e-mail the following day: "fuck u people you are onr [sic] sided afaried [sic] on big deep pockets compines [sic]."
The Respondent sent another email communication to the Center on November 24, 2014, stating: "[…] As you know a name is just a name and there is no infringement if I add to the name unless the other party has covered that, and from my knowledge they have not. So don't where this is going".
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
From a branding perspective, Complainant has operated predominantly through its famous trademarks (such as MARLBORO) over the years. Complainant nevertheless asserts that it has used the "Philip Morris" trade name extensively in association with its tobacco products, and the public has come to associate the name "Philip Morris" with Complainant's various tobacco products, such that Complainant now enjoys common law trademark rights in PHILIP MORRIS.
The Panel finds support for this assertion in the fact that Complainant operates a website at "www.philipmorrisusa.com", at which information about smoking is provided, but, more importantly for present purposes, the alleged advantages of Complainant's tobacco products are set forth. The Panel is also aware that several previous UDRP panels have held that Complainant holds common law trademark rights in PHILIP MORRIS. For example, in Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. 1534894, the panel held: "Complainant has used the PHILIP MORRIS mark for over a century in the United States, and it owns several domain names incorporating its mark […] Through widespread, extensive use in connection with its products, the PHILIP MORRIS mark is well-known and famous." See also Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 ("Complainant's "Philip Morris" trade name has been in use for over a century, and Complainant has sufficiently established rights in the term "Philip Morris"").
The Panel is willing to follow these precedents and conclude that Complainant has common law rights in PHILIP MORRIS for purposes of the Policy.
The Domain Names incorporate the mark PHILIP MORRIS in its entirety and merely add the terms "ecig" or "ecigs" to the front or back of the mark. Given the fact that the dominant portion of each Domain Name is the PHILIP MORRIS mark, and the facts that the mark is closely associated with cigarettes and "ecig" is a common new term for electronic or vapor cigarettes, the Panel finds without hesitation that the Domain Names are confusingly similar to a trademark in which Complainant has rights.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been established.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that Respondent has not been authorized by Complainant to use PHILIP MORRIS as a domain name or otherwise. The Panel also finds that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. Rather, Respondent has misleadingly used the PHILIP MORRIS mark in the Domain Names in order to lure confused consumers to a website where Respondent intends to market e-cigarettes for his own account.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of each of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Names in bad faith within the meaning of Policy paragraph 4(b)(iv). The Panel finds it highly probable that Respondent had Complainant's PHILIP MORRIS mark in mind when registering the Domain Names. The Panel further finds bad faith use under the Policy inasmuch as the Domain Names resolve to a website where electronic cigarettes and related merchandise is offered for sale. The Panel therefore finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or the products sold at that site.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ecigsphilipmorris.com> and <philipmorrisecig.com> be transferred to Complainant.
Robert A. Badgley
Date: November 25, 2014
1 "Vaping" refers to the inhalation of a vaporized mixture which includes nicotine. Many smokers have turned to "vaping" as a presumably safer alternative to using tobacco products. Vaping products are also known as electronic cigarettes, or e-cigarettes.