The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
The Respondent is Kevin Perkins, American Technocratic Party of San Antonio, Texas, United States / Contact Privacy Inc. Customer 124739395 of Toronto, Ontario, Canada. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and are registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 14, 2017.
The Center verified that the Complaint together with the amended 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 March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 1, 2017. 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 tobacco products manufacturer located in Virginia, United States. The Complainant has used the PHILIP MORRIS mark continuously throughout the United States for over a century in connection with its tobacco products. The Complainant’s net revenues in 2014 alone exceeded USD 21 billion and its total assets for the same period exceeded USD 10 billion. The Complainant owns several domain names incorporating the PHILIP MORRIS mark, including , , , and . The public has come to associate the PHILIP MORRIS mark with the Complainant and its tobacco products.
The Respondent registered the disputed domain names on August 8, 2016, using a privacy shield service to hide his identity. The Registrar provided contact information for the Respondent, who is an individual located in Texas, United States. The Respondents name and/or email address is associated with several other domain names that include well-known third-party marks, including , and the names of well‑known United States political figures, including , , , and .
The disputed domain names do not resolve to active websites.
Previously, the Respondent has lost three domain name disputes brought against him by the Complainant and its parent company Altria Group, Inc. See Philip Morris USA Inc. v. Kevin Perkins,NAFClaim No. 1707117; Altria Group, Inc. and Altria Group Distribution Company,NAF Claim No. 1714319; Altria Group, Inc. and Altria Group Distribution Company v. Kevin Perkins,NAF Claim No. 1707224. 5. Parties’ Contentions A. Complainant
Previous panels have recognized the Complainant’s rights in the PHILIP MORRIS mark and that the mark is famous. See, e.g., Philip Morris USA Inc. v. Contact Privacy Inc. / Ray A. Board,WIPO Case No. D2016‑0840. The PHILIP MORRIS mark is widely recognized in the media as referring to the Complainant and its tobacco products and has been for many years. The Complainant’s government filings demonstrate that the public has significant exposure to the Complainant and the PHILIP MORRIS mark.
The disputed domain names are confusingly similar to the PHILIP MORRIS mark. The disputed domain names incorporate the PHILIP MORRIS mark in its entirety. The addition of the Top-Level Domain (“TLD”) “.com” or “.org” is irrelevant in determining whether a disputed domain name is confusingly similar to a protected mark.
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 products provided by the Complainant under the PHILIP MORRIS mark. The Respondent has never been known by any name or trade name that incorporates “Philip Morris.” The Respondent has never sought or obtained any trademark registrations for “Philip Morris” or any variation thereof. The Respondent has not received any license, authorization or consent, express or implied, to use the PHILIP MORRIS mark in a domain name or in any other manner. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names 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 names.
The Respondent chose to use the PHILIP MORRIS mark to divert Internet users from the Complainant’s website “www.” by capitalizing the association of the PHILIP MORRIS mark with the Complainant’s tobacco products. When a complainant’s trademark is distinctive, it is not one that domain name registrants would legitimately choose unless seeking to create an impression of an association with that complainant. Such illegitimate users, such as the Respondent, could have not legitimate interests in the trademark. That the Respondent registered multiple domain names including the PHILIP MORRIS name is itself evidence of the Respondent’s bad faith.
The Respondent registered and is using the disputed domain names in bad faith. The Respondent registered the disputed domain names with full knowledge of the Complainant’s rights in the PHILIP MORRIS mark, which predate the Respondent’s registration of the disputed domain names. The PHILIP MORRIS mark has been in use for more than a century, whereas the Respondent registered the disputed domain names just recently in August, 2016.
The Respondent’s use of the PHILIP MORRIS mark to divert Internet users from the Complainant’s website demonstrates bad faith use of the disputed domain names. The Respondent’s use of a privacy shield service to mask his identity is a strong indication of both bad faith registration and use. That the disputed domain names do not point to active websites does not prevent a finding of bad faith use. A panel should consider all circumstances of the case. Cumulative circumstances that have been found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the concealment of the registrant’s identity. These same indicia of bad faith are present in this case. Moreover, the registration and use of the disputed domain names creates a form of initial interest confusion, which attracts Internet users to the disputed domain names based on the use of the PHILIP MORRIS mark. This is further evidence of bad faith use of the disputed domain names.
The Complainant requests that the disputed domain names be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to a mark in which the Complainant has rights. The PHILIP MORRIS mark uniquely identifies the Complainant and its tobacco products. Consumers have come to associate the PHILIP MORRIS mark with the Complainant and its products. Accordingly, the Complainant owns trademark rights in the mark. The Panel accepts that the Complainant’s PHILIP MORRIS mark is well‑known.
The disputed domain names are confusingly similar to the Complainant’s mark. Each reproduces the PHILIP MORRIS mark in its entirety. Neither the addition of the geographically descriptive terms “Africa,” “Asia,” “Europe,” “North America,” and “South America” nor the addition of the generic geographic descriptors “global” and “international” affects the assessment of whether the respective disputed domain names are similar to the Complainant’s trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory,WIPO Case No. D2000-1414; see also A Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei,WIPO Case No. D2014-1093. A geographic place name included in a disputed domain name is not a distinguishing element because it is likely to be perceived by consumers as indicating the website of the Complainant in the corresponding region of the world. See Inter IKEA Systems B.V. v. Muhannad Mayyas,WIPO Case No. D2016-0067; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel,WIPO Case No. D2015-0210. Similarly, the addition of the generic term “facts” to the PHILIP MORRIS mark in the disputed domain name does not sufficiently distinguish the disputed domain name from the PHILIP MORRIS mark. The addition of a generic term to a famous mark is not sufficient to avoid confusion. See Compagnie Générale, supra. Neither does the addition of dashes in the disputed domain names or sufficiently distinguish those disputed domain names from the PHILIP MORRIS mark to avoid confusing similarity. Punctuation is irrelevant in the confusing similarity analysis, especially when the disputed domain name reproduces the Complainant’s mark in its entirety. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng,WIPO Case No. D2014-0714. Finally, the TLDs “.com” or “.org” to the disputed domain names, being a technical component of the disputed domain names, have no legal significance in the analysis. See Belo Corp. v. George Latimer, WCM, Inc.,WIPO Case No. D2002-0329. Accordingly, the disputed domain names are not sufficiently different from the PHILIP MORRIS mark to avoid confusion. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain names.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are not used in connection with any active websites. Nor has the Respondent demonstrated preparation to use the disputed domain names in connection with a bona fide offering of goods or services.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant states, and the Respondent does not deny, that the Complainant never licensed, authorized or consented to the Respondent’s use the PHILIP MORRIS mark or to register a domain name including the mark.
Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. C. Registered and Used in Bad Faith
The Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 such website or location or of a product or service on such website or location.
The Respondent was undoubtedly aware of the Complainant and its PHILIP MORRIS mark at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainant and its PHILIP MORRIS mark are known widely and throughout the United States, where the Respondent is located. The PHILIP MORRIS mark has been in use for more than a century. A simple Internet search for “Philip Morris” would have yielded many obvious references to the Complainant. The Respondent’s intentional registration of domain names incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
Although the Respondent is passively holding the disputed domain names, passive holding can still constitute bad faith use under the particular circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The disputed domain names incorporate the Complainant’s extensively used and well-known PHILIP MORRIS mark in its entirety and the Respondent must have been aware that Internet users would be led to believe that the disputed domain names and any resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206. The Respondent’s holding of the disputed domain names prevents the Complainant from reflecting its mark in the same domain names. See AXA, supra. The Respondent holds other domain names that are comprised of, in part, other well-known third-party marks or famous political figures’ names, which is prima facie evidence that the Respondent regularly has been engaging in a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer,WIPO Case No. DAU2013-0012. Indeed, the Respondent has previously been found to have violated the Policy by registering other domain names confusingly similar to the Complainant’s marks. Additionally, the Respondent actively attempted to hide his identity by using a privacy shield service, an indicator of bad faith registration and use in light of the Respondent’s knowledge of the Complainant’s rights in the PHILIP MORRIS mark. See Bluewater Rubber & Gasket Co. v. Mrs Sian Jones / Easyspace Privacy,WIPO Case No. D2010-2112. Under the totality of the present circumstances, the Respondent’s passive holding of the disputed domain name amounts to use in bad faith. See Telstra, supra. 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, , , , , , Kimberley Chen Nobles
Sole Panelist
Date: May 15, 2017
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