WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Juan Perez

Case No. D2018-0389

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 Juan Perez of Hialeah, Florida, United States.

2. The Domain Names and Registrar

The disputed domain names <bitcoinphilipmorris.com>, <bitcoinphilipmorris.net>, <bitcoinphilipmorris.org>, <philipmorrisbitcoin.com>, <philipmorrisbitcoin.net>, <philipmorrisbitcoin.org> 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 February 21, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. 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 February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2018.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 26, 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.

On March 27, 2018, in response to the Center’s Notification of Panel Appointment, the Respondent sent an email communication to the Center.

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. 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 names:

<philipmorrisbitcoin.com>

<philipmorrisbitcoin.net>

<philipmorrisbitcoin.org>

<bitcoinphilipmorris.com>

<bitcoinphilipmorris.net>

<bitcoinphilipmorris.org>

were registered between November 3 and 10, 2017, and resolve to a website stating that “the website is coming soon”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names should be transferred to the Complainant because:

1) the disputed domain names <philipmorrisbitcoin.com>, <philipmorrisbitcoin.net>, <philipmorrisbitcoin.org>, <bitcoinphilipmorris.com>, <bitcoinphilipmorris.net>, <bitcoinphilipmorris.org> are 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 names can be considered as capturing, in their entirety, the Complainant’s PHILIP MORRIS trademark and simply adding the generic term “bitcoin” to the beginning or 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 names and the Complainant’s mark under paragraph 4(a)(i) of the Policy, and the disputed domain names must be considered identical and confusingly similar to the Complainant’s mark. It is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to paragraph 4(a)(i) of the Policy.

2) the Respondent has no rights or legitimate interests in the disputed domain names. 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 names, which evinces a lack of rights or legitimate interests in respect of the disputed domain names. The Respondent has not received any license, authorization, or consent by the Complainant to use the PHILIP MORRIS trademark in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domains names, or at any other time since. In addition, the WhoIs records associated with the disputed domain names do not identify the Respondent by those disputed domain names. The Complainant also notes that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent of commercial gain. The Respondent is just trying to use the disputed domain names to redirect Internet users to holding pages with a message that states, “Website Coming Soon!” and has failed to make use of this disputed domain names and its inactive websites and has not demonstrated any attempt to make legitimate use of them.

3) the disputed domain names were registered and are 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 Complainant’s PHILIP MORRIS trade name has achieved inherent distinctiveness and fame resulting from over a century of continuous use. The Respondent registered the disputed domain names in November 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 Respondent’s inclusion of the PHILIP MORRIS trademark in the disputed domain names was no accident. The Respondent has purposefully registered the Complainant’s famous mark in an effort or divert Internet users from the Complainant’s actual website. The Complainant argues that the Respondent knew or at least should have known 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 names and 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 pursuant to paragraph 4(b)(iv) of the Policy, with no good faith use possible. The Complainant also mentions that in addition to the disputed domain names, the 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 further evidence of bad faith registration and use of the disputed domain names.

B. Respondent

The Respondent did not submit a formal reply to the Complainant’s contentions but did submit, after the Panel’s appointment, an informal email communication to the Center. In the informal communication, the Respondent indicated his intention to transfer the disputed domain names to the Complainant but that he was unable to do so since he could not get the authorization codes to complete the transfers because the disputed domain names were locked.

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 names are 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 use and a well-known mark in the tobacco industry and that the disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark in its entirety, and the addition of the term “bitcoin” to the beginning or end of the mark. The consensus view among UDRP panels is that a Top-Level Domain (“TLD”) such as “.com” in domain names 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 names are 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 names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain names. 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 names or has been commonly known by the disputed domain names. Also, there is no evidence that the Respondent has an intention to use the disputed domain names 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 names.

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 names.

Moreover, in his email communication of March 27, 2018, the Respondent indicated his intention to transfer the disputed domain names to the Complainant.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names 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 names in bad faith in violation of the Policy, paragraph 4(a)(iii). The Respondent has created disputed domain names that are confusingly similar to the Complainant’s trade name, brand, and marks, as well as its <philipmorris.com> domain name with the knowledge of the Complainant’s world-wide famous brand and its business in the tobacco industry. The Complainant insists that even passively holding the disputed domain names that contain the Complainant’s trade name and the inactive websites demonstrate the Respondent’s unauthorized registration of the disputed domain names in bad faith. The Respondent has purposefully registered the Complainant’s famous mark in an effort or divert Internet users from the Complainant’s actual website and to cause confusion among Internet users as to the source of the disputed domain names.

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 names.

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, that it has been used for more than 100 years since 1846. The disputed domain names are 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 names 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 names or the name “Philip Morris”. It was clear that the Respondent registered the disputed domain names 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 names and the Complainant’s trademark. In the circumstances of this case, the passive holding of the disputed domain names does not prevent a finding of bad faith. See section 3.3 of WIPO Overview 3.0.

Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <bitcoinphilipmorris.com>, <bitcoinphilipmorris.net>, <bitcoinphilipmorris.org>, <philipmorrisbitcoin.com>, <philipmorrisbitcoin.net>, and <philipmorrisbitcoin.org> be transferred to the Complainant.

Andrew J Park
Sole Panelist
Date: April 11, 2018