Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter, United States.
Respondent is Ray A. Board, Estate of Ray A. Board of Bedford, Ohio, United States. 2. The Domain Name and Registrar
The disputed domain name, , is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2016. On August 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 August 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 20, 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 has used the tradename “Philip Morris” in commerce for more than one hundred years in conjunction with the sale of Complainant’s tobacco products. Accordingly, under the laws of the United States in which Complainant is domiciled and in which Respondent is resident, Complainant has acquired a common law trademark in PHILIP MORRIS.
Complainant has registered a number of domain names in which the PHILIP MORRIS mark has been used as the Second-Level domain name (“SLD”). Complaint, Annex E. Indeed, numerous articles in nationally and internationally circulated publications refer to Complainant and its products by Complainant’s trade name, further establishing the association between Complainant and its tobacco products sold under the PHILIP MORRIS mark. Complaint, annex F. Net revenues for its products sold under the PHILIP MORRIS mark exceeded USD 21 billion for the fiscal year ended December 31, 2014. Complaint, Annex G.
Respondent registered the disputed domain name on May 16, 2016, which registration was updated to May 17, 2016. The disputed domain name resolves to a website which states: “The Blog you were looking for was not found. If you are the owner of this Blog, please sign in.” 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the common law trademark PHILIP MORRIS. Complainant contends that Respondent has no rights or interests in respect of the disputed domain name, as Respondent has no trademarks in the name, Respondent is not known by the name, and that Respondent has no connection or affiliation with Complainant, or its business. Finally, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith in that Respondent did not register the disputed domain name until decades after Complainant had established and promoted its PHILIP MORRIS common law trademark, not only in the United States, but around the world. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s famous PHILIP MORRIS trademark in its entirety, to which Respondent has appended the English word “stock” and a misspelling of the English word, “shareholder”. A domain name which incorporates in its entirely a famous trademark may be deemed confusingly similar to the trademark incorporated. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the PHILIP MORRIS trademark, in which Complaint has rights. B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Nothing in the record suggests that Respondent has been using the name “Philip Morris” in a manner that would demonstrate rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Complainant’s mark has been in commercial use for decades and is well known throughout the world. In a very similar case to this, in which the same Respondent registered the domain name , which incorporated the famous PHILIP MORRIS mark in its entirety, to which Respondent appended the English word “stock” and a different, though similar, misspelling of the English word, “shareholder”, the panel found that Respondent had registered and used the domain name in bad faith. See Philip Morris USA Inc. v. Domains by Proxy / Ray A Board,WIPO Case No. D2016-0840. This Panel finds that Respondent has registered and is using 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: October 21, 2016
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