WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Brands Sàrl v. Pmi Int, Philipmorrisinternationals
Case No. D2018-0105
1. The Parties
The Complainant is Philip Morris Brands Sàrl of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Pmi Int, Philipmorrisinternationals of Mamaroneck, New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <philipmorrisinternationals.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 22, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on February 20, 2018. 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 Brands SàrI, is a part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to “PMI”). PMI is a leading international tobacco company, operating on more than 180 markets. Moreover PMI operates 46 production facilities in 32 countries.
The Complainant is the owner of large portfolio of trademark registrations around the world, in particular, the registered trademarks PHILIP MORRIS set out in Annex 5 and non-comprehensive list of Philip Morris trademarks in Annex 6. However the Complainant for the purposes of its Complaint pointed out two trademark registrations: European Union Trade Mark No. 000075564 PHILIP MORRIS registered on April 21, 1998 (covering class 34) and United Kingdom of Great Britain and Northern Ireland trademark No. 00000584669 PHILIP MORRIS registered on April 2, 1938 (covering class 34), both duly renewed.
The companies affiliated to Philip Morris International Inc. operate various domain names to promote goods and services of the company: ˂philipmorrisinternational.com˃ (registered on February 7, 2002), ˂pmi.com˃ (registered on January 22, 1997), ˂philipmorris.com˃ (registered on August 8, 1995), <philipmorris.net> (registered on December 27, 2001), <philipmorris.org> (registered on February 21, 2002), <philipmorris.info> (registered on August 3, 2001) and many others.
According to the current record, the Disputed Domain Name <philipmorrisinternationals.com> was registered on August 24, 2017.
The Disputed Domain Name appears to have been used in connection with a fraudulent email scheme. As at the date of this decision, the Disputed Domain Name does not resolve to any active website.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant notes that due to worldwide popularity of registered PHILIP MORRIS trademarks in the name of the company and related brand name “Philip Morris”, they are constantly subject to illegal exploitation.
The Complainant has large portfolio of PHILIP MORRIS trademarks in numerous jurisdictions, including, but not limited to the European Union. The Complainant further contends that the Disputed Domain Name is confusingly similar to its PHILIP MORRIS trademarks and the company name Philip Morris International Inc., which the Complainant is affiliated with.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not licensed or otherwise permitted the Respondent use any of its trademarks or to register any domain names incorporating its trademark PHILIP MORRIS. Also the Complainant notes that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name.
As far as registration and use of the Disputed Domain Name in bad faith is concerned, the Complainant submits that the information on the Respondent’s identity is false since the Respondent is trying to impersonate the Complainant and pretending to be part of the PMI Group. The Complainant also notes that the Respondent provides a false job offer through an email address using Disputed Domain Name and thereby impersonating PMI. At Annex 8 to the Complaint is a sample of a fraudulent offer of employment, sent by email by the Respondent using the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes that the Complainant’s contentions are reasoned and that the Disputed Domain Name should be transferred to the Complainant pursuant to the Policy.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, the Complainant must show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns trademarks registrations for PHILIP MORRIS dating from as early as 1938.
The Panel finds that the Disputed Domain Name incorporates the Complainant’s Trademark PHILIP MORRIS in its entirety along with the term “international” (without respect to the last letter “s”). The addition of descriptive or geographical wording to a trademark in a domain name is generally insufficient to distinguish the domain name from the trademark where the trademark is recognizable in the domain name. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to PHILIP MORRIS trademark in which the Complainant has rights.
Therefore the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Trademarks. Hence the Panel holds that the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
The Complainant has never given any permission and has never authorized the Respondent to use any of the Complainant’s trademarks. The Complainant apparently does not have any relationship or association with the Respondent. The Respondent does not appear to be known by the Disputed Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Moreover, the Disputed Domain Name appears to be a typosquatted version of the domain name ˂philipmorrisinternational.com˃ belonging to one of the companies affiliated to Philip Morris International Inc. The Disputed Domain Name is used for an email address which reflects the PMI company name and it was chosen assuming that Internet users could not notice a mistake in one letter “s” and could conceive that an email from the Disputed Domain Name was a legitimate email from the Complainant. In view of the above, it can be considered that the Disputed Domain Name was registered for misleading purposes and consequently the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Taking into consideration the exclusive trademark rights belonging to the Complainant and the strong reputation of the Complainant’s trademarks, the Respondent could not reasonably acquire its association with the Complainant’s trademarks and business.
The Panel also finds that the Respondent registered the Disputed Domain Name long after the Complainant registered its PHILIP MORRIS trademark and long after the Complainant used its trademarks in commerce for the first time.
The Panel thus finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s first registration for the PHILIP MORRIS trademark predates the registration of the Disputed Domain Name by 80 years. The PHILIP MORRIS trademark has been in commercial use from its first registration till now. Also the Complainant’s PHILIP MORRIS trademark has been acknowledged as well-known by numerous UDRP decisions. See, e.g.,Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel, WIPO Case No. D2015-1034 (“several UDRP panels have recently held that the PHILIP MORRIS trademark is well-known and famous due to its widespread and extensive use in connection with Complainant’s tobacco products and have acknowledged Complainant’s unregistered trademark rights therein”); Philip Morris USA Inc. v. Dante Credaro, Two2face Corp., WIPO Case No. D2016-1627 (holding that PHILIP MORRIS is worldwide a well-known trademark closely associated with the Complainant’s name and tobacco products). Consequently the Respondent was obviously aware of the Complainant’s trademark, company name and worldwide business when registering the Disputed Domain Name. It is supported, among others, with the fact that the Respondent indicated its name as “pmi int” in the WhoIs information for the purpose of its impersonating the Complainant.
The Panel also finds that the Disputed Domain Name completely incorporates the part of company name Philip Morris International Inc., which the Complainant is affiliated to. Addition of letter “s” to the part of the PMI company name in the Disputed Domain Name does not change an impression of association of the Disputed Domain Name with the company name. Such addition of extra letter is commonly known as “typosquatting”. Taking into account that users (consumers) could undoubtedly misspell and/or mistype the PMI company name, most of them will certainly enter the typo-squatted Disputed Domain Name instead of the correctly spelled company name.
Moreover the Respondent used the Disputed Domain Name as part of a fraudulent email scheme misleading users by providing false offers of employment by email apparently on behalf of the Complainant for the purpose of tricking Internet users into providing money for establishing the infrastructure for a false home-based job. Previously several UDRP panels have concluded that email-based phishing schemes with use of a complainant’s trademark in domain names are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, WIPO Case No. D2015-1774; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383 (“It is well established that such use of a domain name [in connection with phishing activities] is an indication of bad faith use under paragraph 4(b)(iv) of the Policy”).
The Respondent’s overall behavior indicates that the Respondent has no good faith intentions in respect to the Disputed Domain Name and does not use it for any legitimate purpose. It is likely that registration of the Disputed Domain Name intends primarily to take advantages of the Complainant’s well-known PHILIP MORRIS trademark and use its reputation. Having selected, registered and used the Disputed Domain Name for the purpose of a fraudulent email scheme, the Respondent obviously disrupts the Complainant’s business and goodwill.
For the above reasons the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel concludes that the third element of the Policy has been 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 <philipmorrisinternationals.com> be transferred to the Complainant Philip Morris Brands Sàrl.
Date: March 3, 2018