WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Alex Newton
Case No. D2015-0568
1. The Parties
Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Alex Newton of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <phillipmorris.xyz> is registered with Mesh Digital Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2015 and April 2, 2015, the Registrar transmitted by email to the Center its verification responses confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 1, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 7, 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
Complainant is a North-American company, located in Richmond, Virginia, which has the manufacturing and selling of tobacco products, including cigarettes branded as "Philip Morris", as its main activity. More information about Complainant is available on "www.philipmorrisusa.com/en/cms/home/default.aspx". Complainant claims to have sold products under the Philip Morris brand for more than a century.
Besides owning the domain name <philipmorris.com> since August 8, 1995, Complainant owns other domain names, such as <philipmorris.net> since December 27, 2001, <philipmorris.org> since February 21, 2002 and <philipmorris.info> since August 03, 2001, as per Annex C of the Complaint.
The disputed domain name was registered on October 9, 2014 and resolves to a parking page with sponsored links mainly related to Complainant's products.
5. Parties' Contentions
Complainant claims that it has used "Philip Morris" continuously for over a century throughout the United States and that the public associates "Philip Morris" with Complainant as a company, and its tobacco products.
As per Annex C of the Complaint, Complainant also points that it owns several domain names, as for <philipmorris.com>, <philipmorris.net>, <philipmorris.org> and <philipmorris.info>.
Also according to Complainant, Respondent registered and has been improperly using the disputed domain name <phillipmorris.xyz> and that it currently resolves to a parked directory site that shows links to several other websites (Annex D of the Complaint). Complainant says that these links may change from time to time.
Complainant alleges that the disputed domain name is confusingly similar to "Philip Morris", the rights of which belong to Complainant. In this sense, Complainant argues that the longstanding use of "Philip Morris" as the company name, as well as the public's association of "Philip Morris" with Complainant's tobacco products create rights sufficient to prove confusing similarity between the name and the disputed domain name. Complainant adds that it is a well-established principle under United States intellectual property law that a company or a trade name may give rise to trademark rights affording the owner of the name the same protections as any other trademark in certain instances. In order to prove its point of view, Complainant mentions several cases, which contemplate this understanding.
Moreover, Complainant affirms that trade names may properly form the basis of a complaint and refers to Sintef v. Sintef.com, WIPO Case No. D2001-0507, which is an example of the transferring of domain names which were confusingly similar to complainant's unregistered trade name, because complainant had been using it to identify its services for a considerable amount of time. In this case, the panel transferred the domain name to complainant because the trademark law of complainant's jurisdiction provided that such use of a trade name gives rise to common law trademark rights.
Complainant refers to previous UDRP decisions, which recently acknowledged Complainant's common law trademark rights in PHILIP MORRIS (for instance, 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'.").
Furthermore, Complainant states that "Philip Morris" is widely recognized as referring to Complainant and its tobacco products and has been for many years. Also according to Complainant, governmental filings demonstrate that the public has significant exposure to the Philip Morris name and mark (examples are shown in Annex E of the Complaint).
Complainant holds that Annex F of the Complaint proves the widespread recognition of Complainant in the media, which closely associates the company with the tobacco products that it manufactures and sells.
Complainant also alleges that, as other UDRP panels have found, the addition of a generic Top-Level Domain (gTLD) such as ".xyz" is not pertinent to determine whether a domain name is confusingly similar to a protected mark.
With respect to Respondent having no rights or legitimate interests in the disputed domain name, Complainant asserts that Respondent has no affiliation or connection with Complainant, its parent companies or affiliates, or the products offered by Complainant under the "Philip Morris" name. Besides, Complainant declares that Respondent was never known by any name or trade name that incorporates the term "Philip Morris" or "Phillip Morris".
In addition, Complainant points that Respondent has never obtained any trademark registrations for "Philip Morris" or "Phillip Morris". Complainant adds that Respondent has not received any license or authorization to use "Philip Morris" in a domain name or in other manners.
Complainant also claims that it is no accident that Respondent included the letter "l" in "Philip Morris" using, therefore, the "Phillip Morris" name. By doing so, Complainant argues that Respondent had the purpose of drawing Internet users to his website by capitalizing on the association with Complainant's tobacco products. Complainant mentions Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Additionally, Complainant states that Respondent's objective was to divert Internet users seeking to visit Complainant's legitimate website to its parked, directory website. In this sense, Complainant affirms that Respondent has registered and is using the disputed domain name in bad faith, since he has full knowledge of Complainant's well-known rights in "Philip Morris". Complainant involves the authority of previous Philip Morris USA Inc. v. David Delman and Lori Wagner, supra, among others.
Complainant argues that there is no doubt that Respondent was aware of Complainant's rights towards the "Philip Morris" name, which, in accordance to Complainant, has been in use for over 100 years and has a significant Internet presence, as shown in paragraph 22 of the Complaint.
Lastly, Complainant declares that Respondent is also using the disputed domain name in bad faith, since it uses "Phillip Morris" to lure adult smokers to his website. Complainant further claims that Respondent's misspelling of "phillipmorris" with two "l"s in the disputed domain name is an indication of bad faith. Considering this, Complainant refers to the previous UDRP cases AT&T Copr. v. Fred Rice, WIPO Cases No. D2000-1276 and Kraft Foods, Inc. v. Nowon Uknow, WIPO Case No. D2005-1153.
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
The Panel considers that despite the fact that Complainant does not own trademark registrations for the "Philip Morris" brand, Complainant mentions several previous UDRP decisions (Philip Morris USA Inc. v. David Delman and Lori Wagner, supra; Nu Mark LLC v. Bui, Long, WIPO Case No. D2013-1785 and Sintef v. Sintef.com, supra), in which complainants do not rely on registered trademark rights, but rather on rights in the trade name. Considering this and the present case, Complainant claims that it has used "Philip Morris" continuously for over a century throughout the United States and that the public associates "Philip Morris" with Complainant as a company.
In this sense, the Panel understands that Complainant's "Philip Morris" trade name has been in use for a considerable amount of time, and, as a result, Complainant has sufficiently established trademark rights over the term "Philip Morris" for the purposes of the Policy. As stated in the above-mentioned UDRP decisions, the Policy is not limited to registered trademarks. Therefore, unregistered trademarks are also sufficient for fulfilling the purposes of paragraph 4(a)(i) of the Policy. Accordingly, common law rights may give rise to trademark rights under paragraph 4(a)(i) of the Policy, on condition that Complainant has demonstrated that the disputed domain name "has become a distinctive identifier associated with the complainant or its goods and services" (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0", paragraph 1.7).
Additionally, the Panel recognizes that "Philip Morris" is the distinctive part of Complainant's trademark and that Complainant has submitted evidence that it uses "Philip Morris" on its websites "www.philipmorris.com", "www.philipmorris.net", "www.philipmorris.org" and "www.philipmorris.info". The mere addition of a "l" to the PHILIP MORRIS trademark does not avoid the confusing similarity between the disputed domain name and the trademark.
The Panel also considers that the addition of a gTLD such as ".xyz" is not pertinent to determine whether the disputed domain name is confusingly similar to the PHILIP MORRIS mark.
Therefore, the Panel concludes that the disputed domain name <phillipmorris.xyz> is confusingly similar to Complainant's PHILIP MORRIS trademark.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview 2.0 as follows: "[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
In this case, Complainant has provided sufficient prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <phillipmorris.xyz>.
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license with Respondent, regarding the use of the trademark PHILIP MORRIS and that Respondent is not affiliated with Complainant's activities.
Furthermore, it is clear that there is no trademark registered, in the name of Respondent, that consists of, or contains, the terms "Phillip Morris" or "Philip Morris", and that it has any right on an unregistered basis to such a mark. On that account, the Panel is also of the same opinion of Complainant that Respondent is not commonly known by the disputed domain name and does not trade under the name "Phillip Morris".
Moreover, the disputed domain name is being used in connection with a commercial link service, or "link farm", as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of legitimate goods or services and does not confer a legitimate right or interest in the disputed domain name (see e.g., Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550).
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
The Panel is of the opinion that Respondent had the purpose of attracting Internet users to his website by suggesting an association with Complainant's name and with Complainant's tobacco products. In this sense, the Panel finds that Respondent chose to include the letter "l" in <phillipmorris.xyz> on purpose in order to create a confusion with Complainant's trademark. By doing so, Respondent was seeking to attract Internet users who mistype or misspell one of Complainant's domain names to his website. Furthermore, the disputed domain name is being used in connection with a commercial link service, or "link farm", as it is designed to lure users and divert them to other commercial sites. Such registration and use of a misspelled domain name represents the practice of "typosquatting", which constitutes bad faith. A similar understanding was adopted in previous UDRP decisions, as per Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No.D2001-0302.
The Panel thus concludes that Respondent's intention in registering and using the disputed domain name is to divert Internet users seeking to visit Complainant's legitimate website to its parked, directory website, taking undue advantage of the fame and notoriety of the PHILIP MORRIS trademark.
In view of the aforegoing, the Panel concludes that Complainant has fulfilled paragraph 4(a)(iii) 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 disputed domain name <phillipmorris.xyz> be transferred to Complainant.
Gabriel F. Leonardos
Date: May 20, 2015