WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Elijah Etame

Case No. D2016-0968

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.

Respondent is Elijah Etame of Woodland Hills, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <philipmorris.live> and <philipmorris.online> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2016, 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2016.

The Center appointed Timothy D. Casey as the sole panelist in this matter on June 30, 2016. 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 is a corporation organized and existing under the laws of the Commonwealth of Virginia, with a principal place of business in Richmond, Virginia. Complainant has used “Philip Morris” for many years in the United States for tobacco products; although various United States trademark registrations for or including “Philip Morris” have expired.

Complainant has registered several domain names incorporating “Philip Morris,” including <philipmorris.com>; <philipmorris.net>; <philipmorris.org>; and <philipmorris.info>. At least one website associated with these domain names utilizes the company name Philip Morris and includes information about the company and associated products.

The disputed domain names were both registered on February 6, 2016. The disputed domain names <philipmorris.live> and <philipmorris.online> resolve to inactive websites that read “Website Coming Soon!”

5. Parties’ Contentions

A. Complainant

Complainant is a large, well-known tobacco company and its “Philip Morris” trade name (the “Mark”) has been and continues to be associated with the manufacture and sales of tobacco products throughout the United States. Complainant contends that the Mark continues to give rise to common law trademark rights sufficient for forming the basis of a complaint under the Policy.

Complainant contends that the disputed domain names incorporate the Mark entirely and are confusingly similar to the Mark in which Complainant has common law trademark rights, that the addition of generic Top-Level Domains (gTLDs) in the disputed domain names is irrelevant with regard to confusing similarity, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain names in bad faith.

Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the disputed domain names, that Respondent was never known by any name or trade name that incorporates the Mark, that Respondent has no connection or affiliation with Complainant, Complainant’s parent company or affiliates, or the products marketed and sold by Complainant, and that Respondent has not received any license, authorization, or consent to use the Mark or any variation thereof in a domain name or any other matter.

Complainant contends that Respondent’s uses of the disputed domain names are misappropriations of the mark and that such misappropriations were done willfully with the intent of drawing Internet users to Respondent’s websites by capitalizing on an association with the Mark. Complainant contends that such use does not give rise to rights or a legitimate interest, especially when the disputed domain names point to inactive websites.

Complainant further alleges that Respondent’s registration and use of the disputed domain names occurred in bad faith. Respondent’s registrations of the disputed domain names postdate Complainant’s use of the Mark by more than a century and that such unauthorized registration is evidence of bad faith. Complainant contends that Respondents registration of two domain names that both incorporate the Mark further manifests Respondent’s bad faith. Finally, Complainant contends that the inactive nature of the websites pointed to by the disputed domain names supports a conclusion of bad faith use.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In view of Respondent’s failure to reply to Complainant’s contentions, the Panel will treat Complainant’s contentions as true and undisputed unless it is unreasonable or unnecessary to do otherwise.

A. Identical or Confusingly Similar

While the Mark does not correspond to a currently registered trademark, the Mark nevertheless continues to operate as a clear source of origin of certain of Complainant’s products, and on that basis operates as a common law trademark in association with the same, for the purposes of the Policy. Accordingly, the Panel finds that Complainant has trademark rights in the Mark.

The disputed domain names incorporate the entirety of the Mark without any further distinguishing wording or variance. The Panel finds the addition of different gTLDs does not change the fact that the disputed domain names are otherwise identical to the Mark.

The Panel finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the dispute domain names. Respondent does not appear to be commonly known by the disputed domain names. Complainant has not licensed the Mark to Respondent and has not otherwise authorized Respondent to use or register the disputed domain names. Further, the Panel cannot imagine any potentially legitimate interest that Respondent might have in the disputed domain names based on the manner in which the disputed domain names have been used on the inactive websites.

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

C. Registered and Used in Bad Faith

Given the well-known, nature of the Mark and associated products, and the fact that Respondent could have easily determined that Complainant continued to consider the Mark as a trademark, indicates that registration of the disputed domain names was likely in bad faith. The passive nature of Respondent’s use of the disputed domain names does not, per se, prevent a finding of bad faith use. See paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Respondent’s failure to reply and contend otherwise, and the lack of any evidence of possible good faith use leaves the Panel with no choice but to find the disputed domain names were registered and have been used in bad faith.

The Panel concludes that the disputed domain names were registered and have been 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, <philipmorris.live> and <philipmorris.online>, be transferred to the Complainant.

Timothy D. Casey
Sole Panelist
Date: July 14, 2016