WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Domains by Proxy / Ray A Board
Case No. D2016-0840
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States") represented by Arnold & Porter, United States.
The Respondent is Domains by Proxy of Scottsdale, Arizona, United States / Ray A Board of Bedford, Ohio, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <philipmorrisstockshearholder.com> 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 April 27, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 9, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2016. The Respondent submitted informal communication on May 14, 2016. No formal Response was submitted.
The Center appointed Steven Auvil as the sole panelist in this matter on June 7, 2016. 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, Philip Morris USA Inc. ("PM USA" or "the Complainant") has used "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 Complainant is the owner of several registered domain names incorporating "Philip Morris."
Previous panels have recognized the Complainant's rights in "Philip Morris" as "well-known and famous".
"Philip Morris" is widely recognized by the media as referring to the Complainant as a company and with the Complainant's tobacco products.
The Disputed Domain Name <philipmorrisstockshearholder.com> was registered on December 14, 2015. The Disputed Domain Name does not direct to an active website.
5. Parties' Contentions
The Complainant asserts that its widespread and longstanding use of "Philip Morris" as a tradename and as a mark in connection with its tobacco products entitle it to protection under the Policy. The Complainant further asserts that the Disputed Domain Name is confusingly similar to its tradename because it incorporates the words "Philip Morris" in their entirety. The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions. The Respondent's May 14, 2016 communication consisted of a blank email.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel recognizes that the term "Philip Morris" has become uniquely associated with and distinctively identifies the Complainant and its tobacco products. Accordingly, this term, when used as a mark, has gained considerable goodwill as both the Complainant's corporate name and brand identifier. Furthermore, the Respondent did not dispute these trademark rights, nor, in all likelihood, given the substantial recognition this mark has established over a century and currently enjoys, could the Respondent successfully do so. As such and as a threshold matter, the Panel accepts that the Complainant has exclusive common law trademark rights in this term sufficient to invoke paragraph 4(a)(i) of the Policy.
Furthermore, other UDRP panels have similarly recognized these rights. See Philip Morris USA Inc. v. Daniele Kanai, iKiss LLC, WIPO Case No. D2015-1527 (listing UDRP decisions recognizing that Complainant's PHILIP MORRIS trademark is well-known and famous); see also Philip Morris USA Inc. v. Peter Roussoniclos, WIPO Case No. D2014-1842 ("several previous UDRP panels have held that Complainant holds common law trademark rights in PHILIP MORRIS").
The Disputed Domain Name incorporates the mark PHILIP MORRIS in its entirety and, therefore, is "identical or confusingly similar" to the PHILIP MORRIS mark. See Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 ("Because the disputed domain names incorporate the trademark in its entirety, they are de facto confusingly similar."). The addition of the term "stockshearholder" to the mark is insufficient to confer requisite and sufficient distinctiveness to that name to avoid user confusion. See Id.;see also Philip Morris USA Inc. v. Daniele Kanai, iKiss LLC, supra.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been established.
B. Rights or Legitimate Interests
The Complainant has also established that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
According to the Complainant, the Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the Complainant's tobacco products. No license or authorization of any other kind has been given by the Complainant to the Respondent. The Complainant has also not discovered, nor is this Panel aware, of anything that would suggest that the Respondent has been using the term "Philip Morris" in any other way that would give him any legitimate rights in the term.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the term "Philip Morris" at the time of the registration.
The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, and not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent or commercial gain. In fact, the Disputed Domain Name resolves to an inactive website.
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. See Philip Morris USA Inc. v. Krunal Verma and MAC, WIPO Case No. D2016-0250 ("It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has at least a right or legitimate interest in the disputed domain name.").
Under such circumstances and in the absence of a reply from the Respondent, the Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the Complainant must also show that the Disputed Domain Name registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists four examples of acts that evidence bad faith registration and use. This list is not exhaustive, but merely illustrative. Philip Morris USA Inc. v. Hady Taniwan/ Personal, WIPO Case No. D2015-0331.
In the Panel's view, it is apparent that at the time the Respondent registered the Disputed Domain Name it must have known of the Complainant's rights in "Philip Morris". The Complainant has been using "Philip Morris" for more than a century and it is recognized as a well-known and famous mark. (See Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel, WIPO Case No. D2015-1034).
The panel further notes that when registering the Disputed Domain Name, the Respondent shielded its identity by using a masking service. This is an indication of bad faith registration and use under the Policy. Philip Morris USA Inc. v. Krunal Verma and MAC, supra ("The fact that the actual registrants of the disputed domain names used a masking service to mask their identities is also a strong indication of both bad faith registration and use under the Policy.")
As noted above, the Disputed Domain Name resolves to an inactive website. The "passive holding of a disputed domain name that incorporates the entirety of the well-known [ ] trademarks permits an inference that the Respondent is not acting in good faith". Philip Morris USA Inc. v. Kat Doe / Whoisguard protected / Whoisguard, Inc., WIPO Case No. D2014-1583. The panel draws that inference here.
In sum, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. For that reason, the third and last element of paragraph 4(a) of the Policy is met.
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 <philipmorrisstockshearholder.com> be transferred to the Complainant.
Date: June 21, 2016