WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Kemal Hatipoglu
Case No. D2017-1644
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“US”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, US / Kemal Hatipoglu of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <iqosphilipmorris.com> and <marlboroteeps.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 August 24, 2017. On August 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the <iqosphilipmorris.com> Domain Name. On August 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 31, 2017.
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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2017.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on October 9, 2017. 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.
On August 31, 2017 the Center received from the Complainant an amended Complaint with Annexes requesting the addition of the domain name <marlboroteeps.com> to this proceeding. Accordingly, on October 20, 2017 the Panel issued an Administrative Panel Procedural Order in which the Panel asked the Center:
(i) to obtain registrar verification for the Additional Domain Name from the concerned Registrar; and
(ii) following registrar verification, to notify the Respondent that the Additional Domain Name has been added to the proceeding and provide additional time for the Respondent to submit a Response.
On October 20, 2017, following receipt of the registrar verification for the Additional Domain Name, the Center informed the Parties that the Additional Domain Name was added to the proceeding, and the Respondent was invited to indicate to the Center by October 25, 2017, whether it wishes to make a Response in relation to the Additional Domain Name.
The Respondent did not reply, nor did it submit any formal response.
4. Factual Background
Philip Morris USA Inc. is a corporation organized and existing under the laws of the Commonwealth of Virginia, with its principal place of business in Virginia.
PM USA has used PHILIP MORRIS continuously throughout the United States for over a century and the public has come to associate PHILIP MORRIS with PM USA as a company and with PM USA’s tobacco products. The Complainant is the owner of the PHILIP MORRIS unregistered trademark. PM USA is also the owner of several domain names incorporating “Philip Morris” including <philipmorris.com>, <philipmorris.net>, <philipmorris.org> and <philipmorris.info>.
The Complainant and its trademark are well known by the public. Several panels have recognized the Complainant’s rights in the Philip Morris name and the fame of PHILIP MORRIS which also is uniquely associated to the Complainant and its tobacco products.
The Complainant is also the owner of the worldwide known and used registered trademark MARLBORO and the IQOS trademark.
The Respondent registered the Domain Names on April 26, 2017. The Domain Names resolve to inactive sites that feature the message “Website Coming Soon!”
5. Parties’ Contentions
The Complainant contends the following:
The Domain Names are confusingly similar to the prior trademarks of the Complainant because:
- they reproduce the Complainant’s trademarks in their entirety with the simply adding of the prefix “iqos” or suffix which do not exclude the confusing similarity between the Domain Names and the Complainant’s marks.
The Respondent has no rights or legitimate interests in respect of the Domain Names because:
- the Complainant has never given to the Respondent any license or authorization to use the PHILIP MORRIS and MARLBORO trademarks, nor is it an authorized dealer;
- the Respondent is not commonly known by the Domain Names and he does not appear to own any trademarks or rights that incorporate the marks PHILIP MORRIS and/or MARLBORO;
- it is unlikely that the Respondent was not aware of the Complainant’s legal rights on the Philip Morris and Marlboro brands at the time of the registration of the disputed Domain Names.
The Domain Names were registered and are being used in bad faith because:
- the Respondent could not ignore the strong notoriety and world renown of the Complainant’s trademarks when he registered the Domain Names;
- the Domain Names resolve to an inactive site that features the message “Website Coming Soon!” causing confusion, mistake and deception;
- the Respondent has employed a privacy service to hide its identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has been using “Philip Morris” as tradename, unregistered trademark and domain name for over a century and it is undoubted that it is became uniquely associated with and distinctively identifies the Complainant and its tobacco products (Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840). It is also well known all over the world. Therefore, it has been proven that the Complainant has rights in the PHILIP MORRIS trademark.
The Complainant also has rights in relation to the worldwide used trademark MARLBORO owned by the Complainant, for which the Complainant obtained the registered trademark No. 0068502, registered on April 14, 1908 with the US Patent and Trademark Office. The Complainant is also the owner of the trademark IQOS since 2014.
The Domain Names <iqosphilipmorris.com> and <marlboroteeps.com> incorporate in their entirety respectively the Complainant’s trademarks IQOS, PHILIP MORRIS, and MARLBORO.
About the prefix “iqos”, the Panel notes that it is the name of a smoke-free product developed and sold by the Complainant. Anyway, the adding of the above mentioned prefix does not render the disputed Domain Name <iqosphilipmorris.com> dissimilar to the trademark of the Complainant.
Regarding the Domain Name <marlboroteeps.com>, the Panel finds that the suffix “teeps”, which is the name of another smoke-free product developed and sold by the Complainant, does not prevent a finding of confusing similarity under the first element.
Furthermore, there are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark even if it is added to another trademark. In particular, there are UDRP decisions stating that where a domain name incorporates the trademark and a generic word, the domain name is to be considered confusingly similar to the trademark owned by the Complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoIsGuard, WIPO Case No. D2007-1872).
Additionally, the Panel does not typically consider, when analyzing the identity or confusing similarity of the disputed Domain Names to the Complainant’s trademarks, the generic Top‑Level Domain suffix (see, i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the well-known trademarks and tradename owned by the Complainant, nor has it been authorized to register and use the Domain Names.
The Respondent is not making legitimate noncommercial or fair use of the Domain Names.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Respondent must has been aware of the existence of the Complainant’s rights in PHILIP MORRIS and MARLBORO when he registered the disputed Domain Names. It is quite predictable that only someone who was familiar with the Complainant’s mark, tradename and products would have registered such domain names including such marks.
This circumstance is in particular confirmed by the fact that the Respondent added to the well known trademarks owned by the Complainant “iqos” and “peeps” which are the names of new developed and sold products of the Complainant.
Only who was aware of the Complainants’ rights and products could make the choice to put together such terms with the Complainant’s trademarks.
The circumstance that at the moment the Domain Names resolve to an inactive site does not prevent a finding of bad faith use (Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel is of the opinion that the Respondent has registered the Domain Names with the intent to profit from the reputation of the well known trademarks of the Complainant by choosing domain names that are confusingly similar to the Complainant’s marks.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use and that when he registered the Domain Names he decided to hide his identity, the Panel believes that the Complainant has demonstrated that the Domain Names have been registered and are being used in bad faith.
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, <iqosphilipmorris.com> and <marlboroteeps.com> be transferred to the Complainant.
Date: October 30, 2017