WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Johnny Angelone, Aware Marketing
Case No. D2015-0380
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States" or "U.S."), represented by Arnold & Porter, United States.
The Respondent is Johnny Angelone, Aware Marketing of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <philipmorrisusasucks.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 5, 2015, 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.
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 the Respondent of the Complaint, and the proceedings commenced on March 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2015. The Center received an informal communication from the Respondent on March 27, 2015. The Respondent did not file a formal Response.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 16, 2015. 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 has used the name "Philip Morris" continuously throughout the United States for over a century, and the public has come to associate that name with the Complainant as a company and with the Complainant's tobacco products. The Respondent registered the Domain Name on October 13, 2014 and set the domain name to point to a website that shows an image that reads "website coming soon!" and contains text below such image that reads "Please check back soon to see if the site is available."
5. Parties' Contentions
The Complainant asserts that its widespread and longstanding use of the name "Philip Morris" and the resulting public recognition give it trademark rights in the United States and entitle it to protection under the Policy. The Domain Name is confusingly similar – according to the Complainant – because it incorporates the words "Philip Morris" in their entirety.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name because: (a) the Respondent has no connection or affiliation with the Complainant, its parent company or affiliates, nor with the products marketed and sold by the Complainant under "Philip Morris"; (b) the Respondent was never known by any name or trade name that incorporates "Philip Morris"; (c) the Respondent has never sought or obtained any trademark registrations for "Philip Morris" or any variation thereof; (d) the Respondent has never received any license, authorization, or consent to use "Philip Morris" in a domain name or in any other manner; and (e) the WhoIs record for the Domain Name does not identify the Respondent by the Domain Name.
The Complainant seeks to demonstrate the Respondent's bad faith registration of the Domain Name through the Respondent's "full knowledge" of the Complainant's rights in the name "Philip Morris." And it seeks to show that the Respondent used the Domain Name in bad faith by diverting Internet users from the Complainant's website, tarnishing the Complainant's intellectual property, causing initial interest confusion among Internet users, and maintaining an inactive website. The Complainant also asserts that the Respondent's registration of another "[trademark]sucks.com" domain name (involving another company's trademark) constitutes a pattern that demonstrates bad faith.
The Respondent did not reply to the Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from the Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove, by a preponderance of the evidence, each of the following elements:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it has common law rights in the PHILIP MORRIS mark and has satisfied the first element of the Policy. The Complainant apparently (and surprisingly) holds no current U.S trademark registrations for the mark PHILIP MORRIS or any similar variation.1 So the Complainant is left to assert either non-U.S. or common law trademark rights, which it seeks to derive from its many years of being a producer of tobacco products and the current use of "Philip Morris" as part of its trade name.
The Complainant asserts that it has used "Philip Morris" continuously throughout the United States for over a century, and that the public has come to associate the words "Philip Morris" with the Complainant as a company and with the Complainant's tobacco products. The Panel accepts the Complainant's uncontroverted assertions that the words "Philip Morris" comprising the Complainant's trade name have come to indicate the source of tobacco products, and accordingly that the Complainant has rights in the mark PHILIP MORRIS that are protectable under the Policy.
The Panel also finds that the Domain Name is confusingly similar to the PHILIP MORRIS mark. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. The Domain Name contains the Complainant's trademark PHILIP MORRIS in its entirety, as a dominant element.
In this case, the addition of the derogatory word "sucks" does not affect a finding that the Domain Name is identical or confusingly similar to the Complainant's trademark for purposes of the Policy. See, e.g., Chubb Security Australia PTY Limited. v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769 (for purposes of the first prong of the Policy, <chubbsux.com> is confusingly similar to CHUBB trademark); Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 (<airfrancesucks.com> is confusingly similar to AIR FRANCE trademark); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (<wal-martsucks.com> is confusingly similar to WAL-MART trademark). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Paragraph 1.3 (consensus view is that "[g]enerally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements).").
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the Domain Name. In this case, the Complainant has made such a showing.
The Complainant makes a number of assertions to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. The Panel accepts the following facts as true: (a) the Respondent has no connection or affiliation with the Complainant, its parent company or affiliates, nor the products marketed and sold by the Complainant; (b) the Respondent has never been known by any name or trade name that incorporates "Philip Morris"; (c) the Respondent has never sought nor obtained any trademark registrations for "Philip Morris" or any variation thereof; (d) the Respondent has never received any license, authorization, or consent to use "Philip Morris" in a domain name or in any other manner; and (e) the WhoIs record for the Domain Name does not identify the Respondent as "Philip Morris" or any similar name. Additionally, the circumstances in this case show that a primary motive (one that is not rebutted by the Respondent) in registering the Domain Name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights.
Absent any assertions by the Respondent in response to the Complainant's allegations, the Panel finds that the Complainant has met its burden under this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the Domain Name within the meaning of paragraph 4(a)(iii) of the Policy. As noted earlier, the Panel considers that one of the Respondent's primary motives in relation to the registration and use of the Domain Name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. Critically, there is nothing (not even so much as a reply) in the record indicating that the Respondent has used or made demonstrable preparations to use the Domain Name for purposes of legitimate criticism.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Panel orders that the Domain Name <philipmorrisusasucks.com> be transferred to the Complainant.
Evan D. Brown
Date: May 14, 2015
1 The Panel searched the United States Patent and Trademark Office ("USPTO") database for registrations of variations of the mark PHILIP MORRIS and found only lapsed registrations. It is well accepted that panels may conduct their own factual research, including checking the status of trademark registrations with the USPTO. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, at n. 1, citing e-Duction, Inv. v. John Zuccarini, d/b/a The Cupcate Party & Cupcake Movies, WIPO Case No. D2009-1369, at n.1.