The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“US”), represented by the law firm Arnold & Porter LLP, US.
The Respondent is Farris Nawas of Houston and Austin, Texas, US. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2014. On December 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent 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 proceeding commenced on January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. The Respondent did not submit any response. Accordingly the Center notified the Respondent’s default on February 5, 2015.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 17, 2015. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 makes and sells tobacco products, including cigarettes branded as “Philip Morris.” While not holding any registered trademark rights in that name, the Complainant claims to have sold products under the Philip Morris brand for more than a century. The Complainant owns and operates several websites whose web addresses incorporate the words “Philip Morris”.
The Respondent registered both disputed domain names in March 2014. When the Panel accessed the disputed domain names on February 23, 2015, each resolved to a single page the entire content of which is the statement “website coming soon! Please check back soon to see if the site is available”. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain names are identical to the Complainant’s Philip Morris brand but for the generic Top-Level Domain (“gTLD”), which is not relevant in a comparison under paragraph 4(a)(i) of the Policy. Complainant has common law rights in Philip Morris by reason of its longtime use of that name to brand its products. “Trade names” are sufficient to invoke the Policy.
2. The Complainant has never authorized the Respondent to use its mark, and the Respondent has never been commonly known by that name. “The Infringing Domain Names resolve to directory sites or websites that indicate that the sites are ‘coming soon.’ The directory sites contain links to numerous other sites advertising goods and services. Upon information and belief, these links may change from time to time.” Such use is not legitimate or bona fide. Under the doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “when a complainant’s trademark is distinctive, it is ‘not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant,’” and thus illegitimate.
3. Given the renown and distinctiveness of the Complainant’s Philip Morris mark, “[t]here is no doubt that Respondent was aware of [that mark].” Further, the Respondent is a “serial cybersquatter” who has registered numerous domain names incorporating well-known or famous trademarks. The Respondent thus comes within the example of bad faith set out in paragraph 4(b)(ii) of the Policy. Further, the Respondent has used the disputed domain names “to lure adult smokers to his websites,” bringing him within the example of bad faith in paragraph 4(b)(iv) of the Policy.
In Section 6 below the Panel discusses the evidence offered by the Complainant in support of these contentions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed on a complaint under the UDRP the Complainant bears the burden of proof under each subparagraph of paragraph 4(a) of the Policy.
Unlike civil litigation in the United States, the Respondent’s default does not automatically result in a decision for the Complainant or constitute an admission of any factual matters pleaded in the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. As to the latter item, “The Policy requires the Complainant to prove each of the three elements.” Western Research 3000, Inc. v. NEP Products, Inc.WIPO Case No. D2004-0755 (emphasis in original).
A. Identical or Confusingly Similar. Each disputed domain name incorporates, verbatim and without adornment, the name Philip Morris in which the Complainant claims rights. The Complainant correctly notes that a mark need not be registered to be the basis for a UDRP complaint. WIPO Overview 2.0, paragraph 1.7. The Complainant’s evidence of its claimed century-old use of its mark, however, is sparse. All that is offered are citations to other UDRP decisions in which such rights were found, evidence of the Complainant’s use of the name in domain names used for its own websites, and several unsupported allegations of its counsel. This last item is of no moment; the Policy and the Rules speak of “evidence” and “proof.” While use in a domain name may evidence common law rights, generally more is required. The Panel acknowledges that the other UDRP decisions support the Complainant’s arguments, but he usually requires proof in the case before him, again as called for by the Rules. See paragraph 3(b)(xv), which requires that a complainant “Annex any documentary or other evidence, including . . . any trademark or service mark registration upon which the complaint relies.” (emphasis supplied).
The Complainant’s shortage of proof is particularly unfortunate in this case, in which its brand truly is well known for tobacco products and evidence of that fact is readily available from public sources as well as from knowledgeable individuals employed by the Complainant. It would have been a simple matter to include a short affidavit from such an individual or a reference to annual sales from a public filing (the Panel’s source of information in this case).
Based upon his own investigation the Panel finds that paragraph 4(a)(i) of the Policy is satisfied, noting however “As is true of far too many pleadings, the Complaint in this case proceeds upon either of two premises antithetical to sound Policy procedure: the assumption that everyone is aware of the Complainant and its marks, or that a pleaded matter is deemed admitted if not expressly denied.” Cincinnati Bell Inc. v. Bubble Bubble,WIPO Case No. D2014-0927. As in that case, the Complainant’s failure to furnish evidence easily accessible to it might in different circumstances (e.g., non-US panelist or lesser known brand) have led to a loss in an otherwise open-and-shut case.
B. Rights or Legitimate Interests. As paragraph 4(a)(ii) of the Policy typically requires proof of a negative, under established Policy precedent the Complainant meets its burden of proof by establishing a prima facie case, which then shifts the burden of production to the Respondent. WIPO Overview 2.0, paragraph 2.1.
The Complainant has shown that it has not licensed the Respondent to use its mark and that the Respondent has not been commonly known by the name Philip Morris. Nothing in the record indicates any right, legitimate interest, or bona fide use on the part of the Respondent, so the Complainant succeeds under this Policy element.
C. Registered and Used in Bad Faith. A second evidentiary deficiency in the Complaint and a misguided legal argument complicate the Panel’s evaluation under this Policy head.
While the Complainant pleads pay-per-click usage in the Complaint (see section 5.A.3 above), its sole evidence in support consists of a copy of a pay-per-click webpage that contains no identification as to web address or date of access. It could have come from anywhere. The Panel accordingly discounts it as proof, leaving no evidentiary support for the Complainant’s otherwise naked allegation. This requires the Panel to consider only the “Coming Soon” language also pleaded by the Complainant and found by the Panel upon accessing the disputed domain names.
The Complainant must separately prove bad faith in registration and use. The “Coming Soon” language indicates no use at all. As the Complainant contends, non-use may under the holding in Telstra Corporation Limited v. Nuclear Marshmallows, supra, constitute use in bad faith if, among other things, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Ibid. That criterion, as the Complainant argues, depends upon the strength and distinctiveness of the Complainant’s mark.
Even if as the Complainant contends its “Philip Morris” name has achieved worldwide recognition for tobacco products, more is needed to meet the Telstra criterion quoted above and therefore this Complainant’s ability to claim non-use as use in bad faith. “Telstra” is a coined, fanciful word, not known to be used for any purpose other than identification of the Australian telecommunications company that was complainant in that case. Philip Morris in contrast is the name of several actors, a racing car driver, a painter, not to mention being a not uncommon name in English-speaking countries. While distinctive for cigarettes it is not distinctive generally. This Panel has no difficulty conceiving of many legitimate uses of Philip Morris in a domain name. Here, there has been no use.
For these reasons the Complainant has failed to demonstrate bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant’s alternative argument under paragraph 4(b)(ii) of the Policy fares better. That provision identifies as evidence of bad faith that “you [respondent] have 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 you have engaged in a pattern of such conduct.”
Again the Panel deems the Complainant’s evidence of the pattern of conduct required by this provision to be less than it should have been. The Complainant cites two newspaper articles about the recent new Top-Level Domains in which the Respondent is identified as a frequent registrant under the new gTLDs. While the articles’ authors give examples, these articles carry no more weight than unsupported factual allegations in a pleading – that is to say, very little. They are hearsay, a secondary source of value only to the extent a panel chooses to believe the author.
And again better evidence is readily available from public sources. As it is now well settled that “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision”, WIPO Overview 2.0, paragraph 4.5, Consensus View, the Panel in his research has found seven other cases under the UDRP or Uniform Rapid Suspension (URS) regimes in which the Respondent was found to have engaged in conduct comparable to that which the Complainant here accuses him.1 Eight cases suffice to demonstrate the required pattern of conduct under paragraph 4(b)(ii) of the Policy. See, e.g., E. Remy Martin & C° v. J Pepin - Emedia Development Ltd,WIPO Case No. D2013-1751. A quick use of Domain Tools indicates that the Respondent has registered over 600 domain names, most of them (as the Complainant alleges) under newly-minted gTLDs.2 This evidence establishes that the Respondent registered and used the disputed domain names 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 and be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: February 27, 2015
1 Sanofi v. Farris Nawas,WIPO Case No. D2014-0705; Swiss Reinsurance Company Ltd. v. Farris Nawas,WIPO Case No. D2014-1873; Mcgraw Hill Financial, Inc. v. farris nawas, NAF Claim No. 1554566; JA Apparel Corp. v. farris nawas, NAF Claim No. 1553753; Oliver Wyman, Inc. v. farris nawas, NAF Claim No. 1552908; NAF Claim No. 1552547; SPANX, INC. v. farris nawas, NAF Claim No. 1547721; Dana Limited v. farris nawas et al., NAF Claim No. 1545160.
2 The “reverse Whois” search function at Domain Tools provides only a total, broken down by gTLD. Obtaining the full names of the domains requires payment of a modest fee. While the Panel did not consider it appropriate to pay that fee himself in aid of the Complainant, he does believe that the Complainant should have done so and included the full report to support its contentions.
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