WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris USA Inc. v. Serkan Kapu
Case No. D2018-0236
1. The Parties
The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Serkan Kapu of New York, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <philipmorriscoin.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 February 5, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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 February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018. The Respondent submitted an informal email communication on February 5, 2018 but did not submit a formal Response. Accordingly, on March 1, 2018, the Center notified the Parties that it would proceed to Panel appointment.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 9, 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 USA Inc., is a corporation organized and existing under the laws of the Commonwealth of Virginia. The Complainant is an American multinational cigarette and tobacco manufacturing company, with products sold in over 180 countries outside the United States. The Complainant has been using the trademark PHILIP MORRIS continuously throughout the United States for over a century and the public has come to associate the trademark PHILIP MORRIS with the Complainant as a company with tobacco products. The Complainant has also registered several domain names incorporating the trademark PHILIP MORRIS including: <philipmorris.com>, <philipmorris.net>, <philipmorris.org>, and <philipmorris.info>. The Complainant's primary domain name is <philipmorris.com>.
The disputed domain name <philipmorriscoin.com> was registered on December 26, 2017 and resolves to a website stating that "[the] website [is] coming soon".
5. Parties' Contentions
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <philipmorriscoin.com> is identical and confusingly similar to the Complainant's mark in which the Complainant has rights. The Complainant has common law rights to the PHILIP MORRIS trademark as it has acquired sufficient secondary meaning. The Complainant has established use in commerce of the trademark and has demonstrated its common law rights by the Complainant's continuous use of the PHILIP MORRIS mark in connection with its products for over a century. The Complainant's PHILIP MORRIS mark is well-known and famous in the tobacco industry. The disputed domain name can be considered as capturing, in its entirety, the Complainant's PHILIP MORRIS trademark and simply adding the generic term "coin" to the end of the mark. The mere addition of this term to the Complainant's mark does not negate the confusing similarity between the disputed domain name and the Complainant's mark under Policy 4(a)(i), and the disputed domain name must be considered confusingly similar to the Complainant's mark.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under the "Philip Morris" name. Moreover, the Respondent was never known by any name or trademark that incorporates "Philip Morris" and is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. The Respondent is also using the disputed domain name to redirect Internet users to a holding page with a message that states, "Website Coming Soon!" and has failed to make use of this disputed domain name and its inactive website, and has not demonstrated any attempt to make legitimate use of them.
3) the disputed domain name was registered and is being used in bad faith. The Complainant's trademark PHILIP MORRIS has the status of a well-known and reputed mark with a substantial and widespread reputation throughout the United States and the world. The Respondent registered the disputed domain name on December 26, 2017, which is significantly after the Complainant first started using the "Philip Morris" name in 1846 and the Complainant's registration of its <philipmorris.com> domain name on August 8, 1995. The Complainant insists that the Respondent knew or at least should have known of the existence of the Complainant's well-known trademark and domain names containing the mark PHILIP MORRIS at the time of its registration of the disputed domain name, and this constitutes per se bad faith.
The Respondent submitted an informal email communication stating "I don't understand the problem? Should I do anything for that?" on February 5, 2018, but did not submit any formal Response to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established common law rights in the mark PHILIP MORRIS by long-standing and continuous use in the tobacco industry. Further, the Panel finds that the disputed domain name is identical to the Complainant's trademark on the grounds that the disputed domain name incorporates the Complainant's trademark in its entirety, and the addition of the descriptive term "coin" and a Top-Level Domain such as ".com" in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant's trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel's view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on the respondent's website or location.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Respondent has created a disputed domain name that is confusingly similar to Complainant's trade name, brand, and marks, as well as its <philipmorris.com> domain name with the knowledge of Complainant's worldwide famous brand and its business in the tobacco industry. The Complainant insists that even passively holding a disputed domain name that contains the Complainant's trade name and an inactive website demonstrate the Respondent's unauthorized registration of the disputed domain name in bad faith.
As stated previously, the Respondent did not file any formal response to the Complaint, failing thereby to rebut the Complainant's allegations of the Respondent's bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel finds that the Complainant's trademark PHILIP MORRIS is well-known, and that it has been used for more than 100 continuous years. The disputed domain name is confusingly similar to the Complainant's trademark and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name "Philip Morris". It is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant's famous brand and it business. Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <philipmorriscoin.com> be transferred to the Complainant.
Andrew J. Park
Date: March 26, 2018