The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1242644939 of Ontario, Canada / Rickard Israelsson of London, United Kingdom of Great Britain and Northern Ireland. 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 June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 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 the Complainant on June 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 29, 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 the Respondent of the Complaint, and the proceedings commenced on July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 6, 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
The Complainant is a United States corporation well-known for its tobacco products. The Complainant has used PHILIP MORRIS continuously throughout the United States for over a century. Previous panels have recognized the Complainant’s rights in “Philip Morris” as “well-known and famous”. The Complainant is the owner of several registered domain names incorporating PHILIP MORRIS.
The disputed domain name was registered on May 9, 2018. The disputed domain name does not direct to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant holds common law rights to the PHILIP MORRIS trademark. The disputed domain name entirely incorporates the Complainant’s trademark. The addition of the generic Top-Level Domain (“gTLD”) “.app” does not add any distinctiveness to the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant. The Respondent was never known as “Philip Morris”. The Respondent never obtained trademark registrations for “Philip Morris”. The Respondent has not received any license, authorization or consent to use the Complainant’s PHILIP MORRIS trademark. The Respondent before any notice on the dispute never used “Philip Morris” in connection with a bona fide offering of goods and services. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent or commercial gain. The Respondent purposefully registered disputed domain name incorporating the Complainant’s famous trademark in an effort to divert Internet users from Complainant’s actual website. The Respondent failed to make use of the disputed domain name as it resolves to inactive website and failed to demonstrate any attempt to make legitimate use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent knew or at least should have known about the Complainant’s famous trademark while registering disputed domain name. The Respondent uses the disputed domain name for an inactive website. The registration and use of the disputed domain name creates a form of initial interest confusion which attracts Internet users to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
According to section 1.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. According to section 1.3 of the WIPO Overview 3.0 to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. In this regard the Panel is satisfied with the evidence provided by the Complainant confirming its rights for Philip Morris as common law trademark. Moreover, such rights were confirmed by previous UDRP panels (see, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board,WIPO Case No. D2016-0840).
According to section 1.11.1 of the WIPO Overview 3.0 the applicable the gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus the Panel disregards the gTLD “.app” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain name incorporates the entirety of the Complainant’s trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPOCase No. D2014-1875).
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive web-site (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302).
Furthermore, the Respondent provided no evidence that it otherwise holds rights or legitimate interests in the disputed domain name.
Considering the above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior famous trademark, which confirms bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity while registering the disputed domain name, and (iv) the implausibility of any good faith use to which the domain name may be put.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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.
Taras Kyslyy
Sole Panelist
Date: August 17, 2018
Full & Egal Universal Law Academy