WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Stephen Thorpe, vrtx agency

Case No. D2021-1103

1. The Parties

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

Respondent is Stephen Thorpe, vrtx agency, United States.

2. The Domain Names and Registrar

The disputed domain names <philipmorriscrypto.com>, <philipmorriscryptocurrency.com> and <philpmorriscryptocurrencies.com> (the “Disputed 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 April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2021.

The Center appointed Colin T. O’Brien as the sole panelist in this matter on May 21, 2021. 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

Complainant has used the term “Philip Morris” in the United States for over a century both as a trademark and a company name. The mark PHILIP MORRIS is widely recognized and has become uniquely associated with Complainant’s tobacco products sold under such brands as Marlboro and Benson & Hedges. Complainant registered domain names incorporating “Philip Morris” including: <philipmorris.com>, <philipmorris.net>, <philipmorris.org> and <philipmorris.info>.

The Disputed Domain Names were registered on December 14, 2020, and point to pay-per-click (“PPC”) websites.

5. Parties’ Contentions

A. Complainant

Complainant need not have registered its trademark to proceed under the Policy, as long as an unregistered trademark has been shown to have acquired distinctiveness as an identifier that consumers associate with Complainant’s goods or services. Complainant holds common law rights to its PHILIP MORRIS mark and it has acquired sufficient secondary meaning. Complainant has established use in commerce of the trademark.

The Disputed Domain Names capture in its entirety, Complainant’s PHILIP MORRIS trademark and simply add the generic terms “crypto currency”, “crypto” and “crypto currencies” to the end of the PHILIP MORRIS trademark. The mere addition of the generic terms to Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Names and the Complainant’s PHILIP MORRIS trademark.

Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has no connection or affiliation with Complainant or its affiliates, or any of the many products provided by Complainant under the PHILIP MORRIS trademark. On information and belief, Respondent has never sought or obtained any trademark registrations for “Philip Morris” or any variation thereof. Respondent has not received any license, authorization, or consent – express or implied – to use “Philip Morris” in a domain name or in any other manner, either at the time when Respondent registered the Disputed Domain Names, or at any other time since.

Respondent was never known by any name or trade name that incorporates “Philip Morris”. Before any notice to Respondent of this dispute, there is no evidence of Respondent’s use of, or demonstrable preparation to use the Disputed Domain Names in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent or commercial gain, as those Disputed Domain Names point to PPC websites.

Respondent has purposefully registered the Disputed Domain Names which incorporate Complainant’s famous PHILIP MORRIS mark in an effort to divert Internet users from Complainant’s actual website.

Respondent is using the Disputed Domain Names to redirect Internet users to a website featuring links to third-party websites. Presumably, Respondent receives PPC fees from the linked websites that are listed at the Disputed Domain Names’ websites. As such, the Respondent is not using the Disputed Domain Names to provide a bona fide offering of goods or services.

Respondent registered the Disputed Domain Names on December 14, 2020, significantly after Complainant first started using the “Philip Morris” name in 1846. The registration of the Disputed Domain Names also significantly postdates the Complainant’s registration of its <philipmorris.com> domain name on August 8, 1995.

The PHILIP MORRIS trademark is a well-known and reputed mark with a substantial and widespread reputation throughout the United States and the world. The awareness of the PHILIP MORRIS trademark is considered, in the whole community in general, to be significant and substantial. The number of third-party domain registrations comprising the PHILIP MORRIS trademark in combination with other words has skyrocketed in the last years. The considerable value of the “Philip Morris” name, brand and PHILIP MORRIS trademark is most likely, a large contribution to this and what made the Respondent register the Disputed Domain Names.

By registering the Disputed Domain Names which add the generic terms “crypto currency”, “crypto” and “crypto currencies” to the end of Complainant’s PHILIP MORRIS trademark, Respondent’s Disputed Domain Names are confusingly similar to Complainant’s trademark, as well as its <philipmorris.com> domain name. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business.

The composition of the Disputed Domain Names makes it illogical to believe that Respondent registered them without specifically targeting Complainant. It is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brands at the time the Disputed Domain Names were registered.

At the time of registration of the Disputed Domain Names, Respondent knew or at least should have known the existence of Complainant’s trademark and registration of domain names containing
well-known trademarks constitute bad faith per se.

Respondent is using the Disputed Domain Names to confuse unsuspecting Internet users looking for Complainant’s services, and to mislead Internet users as to the source of the Disputed Domain Names and associated websites. By creating this likelihood of confusion between Complainant’s trademarks and the Disputed Domain Names, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names.

Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase Internet traffic to the websites at the Disputed Domain Names for Respondent’s own pecuniary gain, as evidenced by the presence of multiple PPC links posted to Respondent’s websites.

The Disputed Domain Names can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Names, and thus, the Disputed Domain Names must be considered as having been registered and used in bad faith.

Previous UDPR panels have concluded that evidence of prior UDRP decisions in which domain names have been transferred away from Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting”.

In addition to the Disputed Domain Names, Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Names.

It is more likely than not that Respondent knew of and targeted Complainant’s PHILIP MORRIS trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns common law trademark rights in the PHILIP MORRIS mark. The Disputed Domain Names incorporate Complainant’s PHILIP MORRIS mark in its entirety. The addition of the descriptive terms “crypto”, “crypto currency” and “crypto currencies” are insufficient to avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).

Accordingly, the Disputed Domain Names are confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Dames and has not at any time been commonly known by the Disputed Domain Names.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names; rather, the evidence suggests that they were registered for PPC websites to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556.

In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Names, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Names were registered many years after Complainant first used its famous PHILIP MORRIS trademark. The evidence on the record provided by Complainant with respect to the extent of use of its PHILIP MORRIS trademark, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Names were registered, Respondent undoubtedly knew of Complainant’s PHILIP MORRIS mark, and knew that it had no rights or legitimate interests in the Disputed Domain Names.

Upon the evidence before the Panel, there is no non-benign reason for Respondent to have registered the Disputed Domain Names containing the PHILIP MORRIS trademark and the terms “crypto”, “crypto currency”, and “crypto currencies”. The Panel finds that resolving the Disputed Domain Names to the PPC websites satisfy the bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. Further, the fact that Respondent registered a total of three separate Disputed Domain Names, all which incorporate Complainant’s famous PHILIP MORRIS trademark as well as terms that relate to the financial industry, and Respondent’s involvement in the previous UDRP cases, establish that Respondent engaged in a bad faith pattern of abusive domain name registration, pursuant to paragraph 4(b)(ii) of the Policy. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131(“It is most unlikely that the Respondents just happened to unintentionally select the Complainant’s distinctive service marks LADBROKE and LADBROKES and inadvertently put them in combination with the name of the card game ‘poker’ when selecting its domain names”. Ordering the transfer of <ladbrokespoker.com>, <ladbrokepoker.com>, <ladbrokepoker.org>, and <ladbrokepoker.net> to Complainant).

Accordingly, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith.

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 Names <philipmorriscrypto.com>, <philipmorriscryptocurrency.com>, and <philpmorriscryptocurrencies.com> be transferred to Complainant.

Colin T. O’Brien
Sole Panelist
Date: June 4, 2021