The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Dante Credaro, Two2face Corp. of Boca Chica, Dominican Republic. 2. The Domain Name and Registrar
The disputed domain name, , is registered with Go Montenegro Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 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 the same date, 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. On August 22, 2016, the Registrar transmitted a further clarification by email to the Center.
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 August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2016.
The Center appointed Theda König Horowicz as the sole panelist in this matter on September 21, 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
The Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia, with its principal place of business in Richmond, Virginia. It is a publicly-traded company.
The Complainant is active in the tobacco industry and has been using in this regard the name and unregistered trademark PHILIP MORRIS in the United States of America for decades.
The Complainant owns several domain names including the trademark PHILIP MORRIS, such as (registered in 1995), (registered in 2001), (registered in 2002) and (registered in 2001). These domain names are linked to the Complainant’s official website.
The Respondent registered the disputed domain name on May 17, 2016; no website is operated under the said domain name, which displays only a “website coming soon!” message. 5. Parties’ Contentions A. Complainant
The Complainant submits to have trademark rights over PHILIP MORRIS based on its company name, its continuous use of PHILIP MORRIS throughout the United States of America for over a century, and its registered domain names which contain the PHILIP MORRIS trademark. In this regard, the Complainant invokes the intellectual property law of the United States of America along with numerous decisions rendered pursuant to the Policy. The Complainant alleges that the disputed domain name which fully incorporates the PHILIP MORRIS trademark is confusingly similar to its rights over the said name.
The Complainants further submits that the Respondent has no rights or legitimate interests in the disputed domain name, notably as:
- the Respondent has no connection or affiliation with the Complainant;
- the Respondent is not known by “Philip Morris”;
- the Respondent never obtained a trademark registration for “Philip Morris”;
- the Respondent never received a license, authorization or consent to use the PHILIP MORRIS trademark;
- there is no evidence of the Respondent’s use or preparations to use the disputed domain name in connection with a bona fide offering of goods and services;
- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain;
- the Respondent chose to use the famous “Philip Morris” name to divert Internet users from the Complainant’s website by capitalizing on the association of “Philip Morris” with the Complainant’s tobacco products;
- the Respondent is not making an active use of the disputed domain name.
The Complainant also invokes that the Respondent has registered and is using the disputed domain name in bad faith. First, the Respondent could not have ignored the Complainant’s prior rights over the PHILIP MORRIS trademark when registering the disputed domain name, particularly since the Complainant’s PHILIP MORRIS trademark is famous. Secondly, the Complainant considers that the use is of bad faith as well, because they are using the exact “Philip Morris” name to divert Internet users from the Complainant’s website. The inactivity of the disputed domain name is supporting this fact. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements to obtain the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element requires that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights. See the Policy, paragraph 4(a)(i).
The Complainant claims to have common law rights over PHILIP MORRIS and produces evidence in order to show its substantial use of the said name over the past decades.
It is a consensus view among UDRP panels that a complainant can successfully assert unregistered trademark rights if the complainant shows that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence in this regard includes length and amount of sales under the corresponding trademark, nature and extent of advertising, consumer surveys and media recognition. Some UDRP panels have noted that, the more obvious the viability of a complainant’s claim to common law rights is, the less onus there tends to be on the complainant to present the panel with extensive supporting evidence. See paragraph 1.7. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0.”).
PHILIP MORRIS is worldwide a well-known trademark closely associated with the Complainant’s name and tobacco products.
Furthermore, previous UDRP panels have recognized the Complainant’s common law rights over PHILIP MORRIS. See, e.g., Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel,WIPO Case No. D2015‑1034; Philip Morris USA Inc. v. Elijah Etame,WIPO Case No. D2016-0968 and Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302.
Under the circumstances, the Panel acknowledges the Complainant’s unregistered trademark right over PHILIP MORRIS.
It cannot be challenged that the disputed domain name contains the Complainant’s trademark in its entirety. The sole addition of the generic Top-Level Domain (“gTLD”) “.vip” and of the geographical indication “usa” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
As a consequence, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The second element requires that the respondent has no rights or legitimate interests in respect of the disputed domain name. See the Policy, paragraph 4(a)(ii). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights to or legitimate interests in the disputed domain name.
In particular, the Complainant has established that it has never authorized the Respondent to register and/or use the trademark PHILIP MORRIS in the disputed domain name.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Respondent has remained silent in these proceedings, further evidencing its lack of rights or legitimate interests in the disputed domain name. The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). The Policy enumerates nonexhaustive circumstances in which evidence of bad faith registration and use can be found.
Some UDRP Panels have, in certain circumstances, found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark, for example, in instances when the complainant’s trademark is shown to be well-known. See paragraph 3.4. of the WIPO Overview 2.0.
The Panel finds that this specific circumstance is fulfilled in the present instance. Indeed, the Respondent could not have ignored the Complainant’s longstanding rights over the company name and the trademark PHILIP MORRIS, which is well-known among a large part of the public notably as the said name is used in relation to tobacco products which are largely distributed through many channels all over the world.
Furthermore, the sole addition of the gTLD “.vip” is an indication that the Respondent knew the Complainant’s rights over PHILIP MORRIS, as it is not a common name.
The disputed domain name is not linked to an active website. However this inactivity does not prevent a finding of bad faith use.
Considering the circumstances of the case, including the fact that the Complainant’s trademark is well-known, the Respondent has no connection to the Complainant or its goods or services, and the Respondent has not filed any submission in the present proceedings (see paragraph 3.2 of the WIPO Overview 2.0), the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
For the above-mentioned reasons, the Panel finds that the third condition instituted by paragraph 4(a)(iii) is fulfilled as well. 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.
Theda König Horowicz
Sole Panelist
Date: October 10, 2016
Full & Egal Universal Law Academy