Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Kassie Grecula of Amherst, Massachusetts, 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 June 6, 2018. On June 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 14, 2018.
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 Respondent of the Complaint, and the proceedings commenced on June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2018.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 12, 2018. 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 is the largest tobacco company in the United States, and has used “Philip Morris” continuously since 1846 to refer to the company and to its tobacco products. In 2016, it had revenues of over USD 22 billion.
Complainant has registered various domain names incorporating “Philip Morris”, including , , , and . Its primary domain, , which was registered on August 8, 1995, resolves to the home page for the company, which contains information about Complainant.
Respondent registered the disputed domain name, on January 17, 2018. The domain resolves to an inactive holding page that states “Website Coming Soon!” 5. Parties’ Contentions A. Complainant
Complainant asserts that it has common law rights in the PHILIP MORRIS trademark, which it has used continuously for over 100 years for its company trade name and for its tobacco products, and that the mark is well known and famous. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s PHILIP MORRIS mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the generic word “bank”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has used “Philip Morris” continuously for over a century to refer to the company and to its tobacco products. Consumers recognize “Philip Morris” as uniquely associated with Complainant and its tobacco products. Accordingly, Complainant has established common law trademark rights in the PHILIP MORRIS mark. Such common law rights in a well-known and famous mark are sufficient to support a complaint under the Policy. Previous panels have found common law rights in the PHILIP MORRIS mark. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board,WIPO Case No. D2016-0840.
The disputed domain name is confusingly similar to Complainant’s PHILIP MORRIS mark. It contains Complainant’s PHILIP MORRIS mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the dictionary word “bank”. Numerous previous UDRP decisions have held that the addition of a dictionary word does not distinguish a disputed domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the PHILIP MORRIS mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant alleges it has exclusive rights in the PHILIP MORRIS mark and has not authorized Respondent to register and use the disputed domain name . Complainant states Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the PHILIP MORRIS mark. Complainant also alleges that Respondent is not known under the mark, and Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain name or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s mark and products when Respondent registered the disputed domain name. Complainant has used the PHILIP MORRIS mark for its tobacco products for over a century, and PHILIP MORRIS is a well-known and famous mark. All of this occurred before Respondent registered on January 17, 2018. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Respondent’s domain name reverts to a holding page that does not make active use of Complainant’s mark. However, passive holding of the domain name registration can still constitute bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In Telstra, the panel considered the specific circumstances of the case, including the following:
(i) the complainant’s trademark has a strong reputation and is widely known;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(v) taking into account all of the above, 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.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has registered and used the disputed domain name in bad faith, and thus Complainant meets the third criterion of paragraph 4(a) of the Policy.
Finally, it should be noted that there are a long line of domain name decisions that found that the Complainant has rights in the PHILIP MORRIS mark and that the disputed domain names are confusingly similar to Complainant’s mark, that the respondents have no rights or legitimate interests in the disputed domain names, and that the respondents have registered and used the disputed domain names in bad faith, and resulted in transfer of the disputed domain names to Complainant. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board,WIPO Case No. D2016-0840. This decision is consistent with this line of domain name dispute decisions. 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.
Sandra A. Sellers
Sole Panelist
Date: July 18, 2018
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