WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Daniele Tornatore

Case No. D2016-1302

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter, United States.

The Respondent is Daniele Tornatore of Cercola, Italy.

2. The Domain Name and Registrar

The disputed domain name, <philipmorris.cloud>, is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2016. On June 28, 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 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 the Respondent of the Complaint, and the proceedings commenced on July 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2016.

The Center appointed Leticia Caminero as the sole panelist in this matter on August 9, 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.

The language of the Registration Agreement in respect of the disputed domain name is English and the Complaint was filed in English.

4. Factual Background

The Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia. It has used “Philip Morris” continuously throughout the United States for over a century in connection with its company and tobacco products.

The Complainant has also registered several domain names incorporating “Philip Morris”: <philipmorris.com> was first registered on August 8, 1995; <philipmorris.net> on December 27, 2001; <philipmorris.org> on February 21, 2002; and <philipmorris.info> on August 3, 2001. The domain name <philipmorris.com> points to the Complainant’s home page at “www.philipmorrisusa.com”, which contains information about the company.

The disputed domain name, <philipmorris.cloud> was registered by the Respondent on February 22, 2016, and resolves to an inactive website that reads “Reserved”.

5. Parties’ Contentions

A. Complainant

First, the Complainant describes its longstanding rights in PHILIP MORRIS. The Complainant has continuously used the PHILIP MORRIS mark for more than a century and the public associates the PHILIP MORRIS mark with the Complainant and its tobacco products. Therefore, the Complainant states that the Respondent’s use of the disputed domain name, <philipmorris.cloud>, is confusingly similar to “Philip Morris” to which the Complainant has rights.

Furthermore, the Complainant declares that the disputed domain name, <philipmorris.cloud>, which appends the term “.cloud” to “philipmorris” in the Top-Level Domain, is confusingly similar to PHILIP MORRIS. Numerous UDRP panels, including those in cases involving infringing “philipmorris” domain names, have held that a domain name is confusingly similar to a company’s name and trademark where, as here, the domain name incorporates that whole company name and trademark. Additionally, UDRP panels considering a similar situation have found confusing similarity, specifically remarking that “cloud” is a generic term, e.g., COMUTO v. Este sas di S. Terracina & C. Societa/Ditta, WIPO Case No. D2016-0758; International Business Machines Corporation v. Libia Sanchez, SAS / Jairo Sandoval,WIPO Case No. DCO2015-0038; Walgreen Co. v. Jerry O’Steen, WIPO Case No. D2014-0985. The disputed domain name does not simply incorporate “philipmorris”; it consists of “philipmorris” as the Second-Level Domain name, combined with the new Top-Level Domain “.cloud”. The addition of a generic Top-Level Domain (“gTLD”) name — here, “.cloud” — is immaterial when determining whether a disputed domain name is confusingly similar to a protected mark.

Second, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, <philipmorris.cloud>. The Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant under PHILIP MORRIS. The Respondent was never known by any name or trade name that incorporates “philip morris”. On information and belief, 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 PHILIP MORRIS in a domain name or in any other manner, either at the time when the Respondent registered and began using the disputed domain name, or at any other time since. In addition, the WhoIs record associated with the disputed domain name does not identify the Respondent by the name “philipmorris.cloud”. The Complainant also notes that, before any notice to the Respondent of this dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, as the disputed domain name points merely to an inactive website. Additionally, the Respondent’s misappropriation of PHILIP MORRIS by its inclusion in the disputed domain name is no accident. Clearly, the Respondent chose to use PHILIP MORRIS to divert Internet users from the Complainant’s website by capitalizing on the association of PHILIP MORRIS with the Complainant’s tobacco products.

Additionally, several UDRP panels have found that when respondents fail to make any use of the disputed domain name as in the case at hand, and merely point that domain name to an inactive website, such respondents have no rights or legitimate interests in the domain name. See, e.g., Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529 (noting that passive holding of a disputed domain name “does not constitute a legitimate use of such a domain name” that would give rise to a legitimate right or interest in the name).

Third, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in PHILIP MORRIS, which greatly pre-date the Respondent’s registration of the disputed domain name, <philipmorris.cloud>. This is readily apparent from the relative timing of the Complainant’s use of PHILIP MORRIS versus the Respondent’s registration of the disputed domain name. Similarly, the Respondent is using the disputed domain name in bad faith, by using the exact PHILIP MORRIS name to divert Internet users from the Complainant’s true website demonstrates bad faith use under the Policy. This conclusion of bad faith is bolstered by the fact that the disputed domain name currently resolves to an inactive website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights;

(ii) the 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.

The Complainant bears the burden of proof on each of these elements. Since the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainant must still support its allegations with evidence to succeed in a UDRP proceeding.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <philipmorris.cloud>, entirely consists of the Complainant’s mark PHILIP MORRIS, followed by the generic Top-Level Domain (“gTLD”) “.cloud”, which is not sufficient to distinguish the disputed domain name. Thus, the disputed domain name is confusingly similar to PHILIP MORRIS.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.

B. Rights or Legitimate Interests

The Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, <philipmorris.cloud>.

The disputed domain name results to an inactive website that reads “Reserved”. Furthermore, there is no evidence that the Respondent, before any notice of the present dispute, used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name. There is no evidence that the Respondent is making a legitimate noncommercial 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 Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

The Complainant’s rights in PHILIP MORRIS are over a century old, while the Respondent only registered the disputed domain name less than a year ago. It could be inferred that the Respondent had previous knowledge about the Complainant’s mark before registration of the disputed domain name and selected it with the Complainant’s trademark in mind. The disputed domain name leads to an inactive website which, in the circumstances of this case, does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel concludes that the registration and use of the disputed domain name is in bad faith.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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, <philipmorris.cloud>, be transferred to the Complainant.

Leticia Caminero
Sole Panelist
Date: August 23, 2016