The Complainant is Philip Morris USA Inc. of Virginia, United States of America ("United States"), represented by Arnold & Porter, United States.
The Respondent is Martial Etame of California, United States. 2. The Domain Name And Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2014. On August 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2014.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on September 23, 2014. 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 major producer and marketer of cigarettes and tobacco products, whose company name is Philip Morris; the Complaint identifies Marlboro as one of the Complainant's particularly well-known brands. According to the Complainant, the "Philip Morris" name is widely known throughout the United States, and in the media, and is associated with the Complainant's tobacco products. The Complainant has registered several Internet domain names incorporating "Philip Morris", including , and . The Annexes to the Complaint reveal that these domain names were registered more than ten years ago, with having been registered in August 2001.
The disputed domain name was registered in January 2014 and resolves to a GoDaddy parking page. 5. Parties' Contentions A. Complainant
The Complainant submits that the "Philip Morris" trade name has been used continuously in the United States for more than a century, and that through such widespread and longstanding use "Philip Morris" has gained public recognition and association with the Complainant's tobacco products throughout the United States. Accordingly, the Complainant maintains that, notwithstanding the absence of a registered trademark, this longstanding association creates rights in "Philip Morris" sufficient for a finding of confusing similarity with the disputed domain name, such as will satisfy the Policy. The Complainant further asserts that such rights have also been recognized in United States intellectual property law. See, e.g. Attrezzi LLC v. Maytag Corp., 436 F.3d 32, 37-38 (1st Cir. 2006) (an unregistered trade name may be safeguarded by trademark law "when consumers associate it with a particular producer or source"). Secondly, the Complainant contends that the disputed domain name is confusingly similar to the "Philip Morris" name, in which the Complainant has exclusive rights. The Complainant then alleges that the Respondent has no rights or legitimate interests in the disputed domain name and, specifically, has no connection, license or affiliation with the Complainant from which it might derive such rights or interests. Finally, the Complainant maintains that the Respondent is in bad faith as it can only have registered the disputed domain name with knowledge of the Complainant's rights in the same, and that it then used the disputed domain name to attract Internet users to its website in bad faith.
The Complainant accordingly requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not answer the Complaint or otherwise reply to the Complainant's contentions, and is consequently in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel decides the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default. 6. Discussion And Findings A. Identical or Confusingly Similar
A threshold issue in any UDRP case is whether the Complainant has rights in the trademark or service mark on which it relies under paragraph 4(a)(i) of the Policy. See, Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123.
Here the Complainant does not rely on registered trademarks; rather it maintains that its company and trade name gives it sufficient rights to be entitled to protection, and to bring this case against the disputed domain name. Common law rights may give rise to trademark rights under paragraph 4(a)(i) of the Policy. The "Consensus view" on this issue, as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7 is as follows: "(t)he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted."
In the instant case the Complainant has provided more than a conclusory allegation of unregistered rights, submitting evidence of the long-standing use of "Philip Morris" in the United States and its wide association with the Complainant's products, as well as evidence of the notoriety of the Complainant and its company name in the press and elsewhere. At least one UDRP case has found that the Complainant had common law trademark rights in "Philip Morris", albeit on quite different facts. Philip Morris USA, Inc. v. David Delman and Lori Wagner,WIPO Case No. D2013-2182. The Complainant cites and relies heavily on the case of Nu Mark LLC v. Bui, Long,WIPO Case No. D2013-1785, in which the complainant, a sister company of the Complainant here, was deemed to hold unregistered rights in the company trade name "Nu Mark", used in connection with the marketing of e-cigarettes. In at least one respect, the case for a finding that "Philip Morris" is a "distinctive identifier associated with the Complainant and its goods or services" is stronger in the instant case than in Nu Mark LLC v. Bui, Long, supra. The Complainant has established that "Philip Morris" has been a company and trade name for more than a century, and part of various domain names for more than a decade, while the trade name "Nu Mark" had only been in existence for a few years, and may therefore be assumed to be far less known and established. Taking into account all the evidence and argument in this matter the Panel determines that the Complainant has sufficiently demonstrated the trade name "Phillip Morris" has become a distinctive identifier associated with the Complainant's goods such that it may here assert rights to the same under the Policy. See also, Sintef v. S,WIPO Case No. D2001-0507; La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate,WIPO Case No. D2009-0534.
The above determination of rights having been made, it is evident that the disputed domain name is confusingly similar with the trade name "Philip Morris" as it contains the entirety of that trade name, with only the addition of an internal hyphen which does not distinguish it from "Philip Morris" in any meaningful way.
The first element of paragraph 4(a) of the Policy is accordingly proven by the Complainant. B. Rights or Legitimate Interests
The Complainant needs to establish at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate that it has such rights or legitimate interests. See also, Meizu Technology Co., Ltd v. "osama bin laden", WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the instant case, the Complainant has clearly and convincingly asserted that neither it, nor any of its affiliates, nor any of their products have any connection with the Respondent, and that the Complainant has at no time given the Respondent any authorization of any kind to use the trade name "Philip Morris" in the disputed domain name or in any other manner. The Complainant further states, on information and belief, that the Respondent has never obtained any trademark registration for "Philip Morris" or any variation thereof, and that the Respondent is not called or known as "Philip Morris."
There is also no evidence before the Panel to suggest that the Respondent is commonly known as "Philip Morris", or any other evidence or indicia suggesting that the Respondent has any rights or legitimate interests in the disputed domain name.
Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant takes the position that the Respondent can only have registered the disputed domain name with "full knowledge" of the Complainant's rights therein. The Complainant's position is here sustainable and largely proven, given the evidence that the "Philip Morris" name has been in use for more than 100 years, has a significant Internet presence and that it is subject to widespread recognition in the media and elsewhere. Furthermore, in light of the Respondent's absence of any demonstrable rights in the disputed domain name, and the broad recognition of the name "Philip Morris", there is little or no basis to conclude otherwise than that the registration of the disputed domain name was with deliberate knowledge of the Complainant's rights and therefore in a bad faith.
The evidence further suggests, and the Complainant asserts, that the Respondent is using the "Philip Morris" name to attract individuals to its website; again given the demonstration of how well-known the "Philip Morris" name is, there is necessarily some diversion of Internet users by the Respondent's use of the disputed domain name. The disputed domain name resolves to a "parking" website at "GoD". In Annex D to the Complaint the Complainant submits a snapshot of that site as at August 12, 2014: it is a "GoDaddy" page that states, inter alia, "welcome to Philip-M, learn how you can get this domain". The Panel visited the site to which the disputed domain name resolves on September 30, 2014. The Panel, logging into the disputed domain name from Switzerland, was directed to a "GoDaddy" site in German and, ultimately, an indication that the disputed domain name was unfortunately not available ("Es tut uns leid, ist nicht verfügbar"), although other domain names containing the words "Philip Morris" were on offer. While, as the Complainant points out, the passive holding of a disputed domain name may in certain circumstances constitute bad faith use under the Policy, this is not a necessary determination here. The Respondent has in some measure used the well-known name "Philip Morris" improperly to attract users to a site; once at that site that domain name and other possibly infringing domain names are or have been for sale. These activities are constitutive of bad faith use under the Policy.
On balance, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent has registered and used the disputed domain name 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 name be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: October 2, 2014
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