WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Tammy Bridges

Case No. D2020-1272

1. The Parties

The Complainant is Philip Morris USA Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Tammy Bridges, United States.

2. The Domain Name and Registrar

The disputed domain name <philipmorrisusacbd.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 May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2020 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 May 26, 2020.

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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on July 2, 2020. 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 is a corporation organized and existing under the laws of the Commonwealth of Virginia, United States. The Complainant has used the mark PHILIP MORRIS (the “Mark”) continuously for over a century. The Mark is associated with a number of popular tobacco brands including MARLBORO and BENSON & HEDGES. The Complainant owns and operates websites at <philipmorris.net>, <philipmorris.org>, and <philipmorris.com>. The Mark is widely recognized and has become uniquely associated with and distinctively identifies the Complainant and its tobacco products. See Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840.

The disputed domain name was registered on March 1, 2020. The disputed domain name previously resolved to a website stating “website coming soon. Please check back soon to see if the site is available” and currently resolves to a website offering pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Compainant asserts that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name consists of the Mark plus two common generic acronyms or abbreviations “usa” and “cbd.” The Complainant also asserts that the Respondent has no legitimate rights or interests in the disputed domain name, has not conducted any bona bide business under the disputed domain name, and is not commonly known by the disputed domain name or the Mark. Finally, the Complainant asserts the disputed domain name was registered and is being used in bad faith to attract unsuspecting Internet users to the Respondent’s website for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The disputed domain name is composed of the Complainant’s Mark plus two common acronyms or abbreviations, namely, “usa” which is commonly known to mean “United States of America”, and “cbd” which is commonly known to refer to cannabidiol, the active ingredient in cannabis derived from the hemp plant. The appendage of dictionary terms or, in this case, common acronyms or abbreviations does not dispel confusing similarity when attached to a widely recognized trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). See also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323; Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service Inc. / Name Redacted, WIPO Case No. D2017-0782.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. Additionally, because the disputed domain name is identical to the Complainant’s Mark, but for the appendage of common acronyms, an inference thus arises that the disputed domain name was registered in bad faith to attract unsuspecting Internet users to the Respondent’s website. See WIPO Overview 3.0, section 2.5.1. It makes little difference that the disputed domain name initially resolved to an inactive website. See Philip Morris USA Inc. v. Contact Privacy Inc. Customer 1242362991 and Customer 1242362992 / Jaquanta Mcrae, WIPO Case No. D2018-1483 (concluding that the “[r]espondent has not used the [disputed domain names] for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the [disputed domain names] are linked to blank webpages. Respondent’s use of the [disputed domain names] in this manner does not give rise to any right or legitimate interest in them.”)

Accordingly, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to come forward with relevant evidence to show rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and is being used in bad faith.

The Panel finds on the evidence presented that the Respondent has intentionally attempted to falsely lure and attract Internet users to the Respondent’s website for commercial gain. The disputed domain name initially resolved to a website which stated, “website coming soon, Please check back soon to see if the site is available”. The passive holding of a website is no bar to a finding of bad faith registration and use. See Philip Morris USA Inc. v. DanteCredaro, Two2face Corp., WIPO Case No. D2016-1627 (noting that “[t]he disputed domain name is not linked to an active website. However, this inactivity does not prevent a finding of bad faith use.”).

Moreover, the disputed domain name, as of this writing, resolves to a website offering auto-generated links for tobacco related products. SeeWIPO Overview 3.0, section 3.5 (“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name […]”).

Moreover, the Mark is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Furthermore, the reputation of the Mark and composition of the disputed domain name lead the Panel to find that the Respondent registered the disputed domain name intending to take unfair advantage of the Complainant’s Mark; such amounts to registration in bad faith under the Policy.

The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <philipmorrisusacbd.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: July 10, 2020