WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair
Case No. D2015-1001
1. The Parties
The Complainant is Philip Morris USA Inc., of Richmond, Virginia, United States of America ("U.S."), represented by Arnold & Porter, U.S.
The Respondent is Steven Scully, J&S Auto Repair of Charlevoix, Michigan, U.S..
2. The Domain Name and Registrar
The disputed domain name <pmcannabis.com> ("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 June 12, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the corresponding 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 June 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Respondent to file a Response was July 13, 2015. The Center received an informal communication from the Respondent on June 23, 2015 indicating non-receipt of the Complaint. Based on the review of the record for this proceeding, the Panel notes that the Complaint was sent to the Respondent in full compliance with the Rules. No further communication was received by the Respondent and the Respondent did not file a formal Response in this proceeding. The Center notified the parties of the Respondent's default on July 14, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter on July 28, 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
Based on the uncontested evidence filed with this proceeding, the Complainant has demonstrated ownership of common law rights in the mark PHILLIP MORRIS and the trade names "Philip Morris" and "PM USA" in the U.S. (the "Complainant's Marks"). The Complainant is also the owner of the domain names <philipmorris.com>, <philipmorris.net>, <philipmorris.org>, <philipmorris.info> and <pmusa.com> with the domain names <philipmorris.com> and <pmusa.com> directed to the Complainant's home page.
The Respondent registered the Domain Name on March 14, 2015. The Domain Name resolves to a parked web page that contains pay-per-click links to other third party websites.
5. Parties' Contentions
The Complainant alleges that the Domain Name is confusingly similar to the Complainant's Marks and company name. The Complainant's longstanding use of "Philip Morris" as a company name and the Complainant's and the public's association of "Philip Morris" with the Complainant's tobacco products, create rights sufficient to find confusing similarity with the Domain Name. The Complainant further argues that it is a well-established principle under U.S. intellectual property law that company or trade names may give rise to trademark rights affording the owner of the name the same protections as any other trademark in certain instances.
The Complainant argues that "Philip Morris" is widely recognized as referring to the Complainant and its tobacco products and has been for many years. It further owns governmental filings that demonstrate that the public has significant exposure to the "Philip Morris" name and mark. The Complainant states that net revenues for the Complainant in this time period exceeded USD 21 billion and total assets for the same period exceeded USD 10 billion. The Complainant further alleges that there is widespread recognition of Philip Morris USA in the media, which closely associates the company with the tobacco products that it manufactures and sells. The Complainant also owns a portfolio of "philipmorris" domain names, and maintains a website at "www.philipmorris.com" that displays information about the company. In addition, the Complainant argues that the use of the abbreviation "pm" with the word "cannabis" in the Domain Name does not dispel confusion. The Complainant's own website includes the term "pmusa," an abbreviation which the Complainant often uses and is included in the Complainant's <pmusa.com> domain name and on its website. In addition, the "PM" initials appear prominently in the insignia that forms part of the famous MARLBORO trade dress.
The Complainant continues to allege that the Respondent's misappropriation of "Philip Morris" by its inclusion in the Domain Name is no accident and that the Respondent choses to use "Philip Morris" to divert Internet users from the Complainant's websites by capitalizing on the public recognition of the Complainant's rights in "Philip Morris." Additionally, to the extent that the Respondent's website may be regarded as inactive, the Complainant argues that merely pointing the Domain Name to a parked directory website does not establish that the Respondent has rights or legitimate interests in the Domain Name.
The Complainant continues to argue that the Respondent registered the Domain Name in bad faith by doing so with full knowledge of the Complainant's rights in "Philip Morris" based on "Philip Morris" having been in use for more than 100 years, and having a significant Internet presence. Further, the Complainant argues that there is widespread recognition of "Philip Morris" by name in the media. The Complainant continues by arguing that the fact that the Respondent's Domain Name resolves to a parked website further supports a finding of bad faith use and registration. Additionally, the Complainant argues that the Respondent registered the Domain Name so as to trade on the goodwill of the Complainant's MARLBORO trademarks by obtaining revenue from the pay-per-click advertisements displayed on its parked website.
The Complainant argues that the Respondent's combination of the Complainant's name and marks with references to "cannabis", a substance that is unlawful under U.S. federal law (the Controlled Substances Act, 21 U.S.C. 801 et seq.),and the law of most U.S. States, tarnishes the "Philip Morris" name. This is particularly so when, as noted above, the Respondent is using <pmcannabis.com> to point to a directory site with click-through links from which, on information and belief, he is deriving revenue. Moreover, the registration and use of the Domain Name create a form of initial interest confusion, which attracts Internet users to the Domain Name based on the use of "Philip Morris" is further evidence that the Domain Name is being used in bad faith.
No formal response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided uncontested evidence to establish that it is the owner of and has common law rights in and to the Complainant's Marks, its trade name and the abbreviation thereof.
A review of the second-level domain of the Domain Name shows that it consists of the abbreviation of the Complainant's Marks and its trade name (i.e., PM) along with the word "cannabis". The addition of the word "cannabis" shows the Respondent attempting an association with the Complainant and its business in order create user confusion when users attempt to access the Respondent's web site at the Domain Name. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant's mark and trade name PM.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder'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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. The uncontested evidence shows that the Complainant had long time and well known rights in its name and the abbreviation thereof as well as the Complainant's Marks at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. Directing the Domain Name to a parked web page of the Registrar with pay-per-click links to other third party websites does not in the circumstances of the present case create rights or legitimate interests in this Domain Name on the part of the Respondent. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 website or location or of a product or service on the holder's website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Name. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather the Respondent directs the Domain Name to a parked page of its Registrar with pay-per-click links to third party websites. As the uncontested evidence shows, the Respondent was not making any legitimate noncommercial or fair use of the Domain Name, but clearly had knowledge of the Complainant, the Complainant's Marks and its name based on its registration of the Domain Name with the abbreviation of "Phillip Morris" (i.e., PM) and the word "cannabis."
The evidence also shows that the registration of the Domain Name by the Respondent does not in any fashion predate the Complainant's significantly earlier first uses and first uses in commerce of the Complainant's Marks and its name. Nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant's Marks and its name. Rather based on the submitted evidence, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its parked web page so as to create a likelihood of confusion with the Complainant's Marks and its name as to the source, sponsorship, affiliation or endorsement thereof. The Panel thus concludes that the Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <pmcannabis.com> be transferred to the Complainant.
Date: August 18, 2015