WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / 3X Domains

Case No. D2016-2370

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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / 3X Domains, Registry of Las Vegas, Nevada, United States.

2. The Domain Name and Registrar

The disputed domain name <philpmorris.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2016, 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 November 30, 2016 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 November 30, 2016.

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 December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2017.

The Center appointed Martin Schwimmer as the sole panelist in this matter on January 9, 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, the largest United States tobacco company, utilizes the name PHILIP MORRIS as a company and trading name.

The Respondent registered the disputed domain name in August 2016. It utilizes the disputed domain name to display a pay-per-click website, and offers the disputed domain name for sale on such website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it owns common law rights in the PHILIP MORRIS trademark based on its continuous use of PHILIP MORRIS throughout the United States for over a century. As the largest tobacco company in the United States, its PHILIP MORRIS mark is famous. Numerous Panels have found as such pursuant to the Policy. Complainant has registered domain names which contain the PHILIP MORRIS trademark.

The Complainant alleges that because the disputed domain name differs from its PHILIP MORRIS trademark by a single letter, it is therefore is confusingly similar to its name.

The Complainant 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” or “Philp 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 Complainant also alleges that the Respondent has registered and is using the disputed domain name in bad faith. First, the Respondent could not have been ignorant of 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 Respondent chose the confusingly similar variant, “PhilpMorris”, to divert Internet users from the Complainant’s website. Furthermore, the Respondent offers the disputed domain name for sale. Finally, the Complainant notes that this Respondent has previously been found by a Panel to have registered and used a domain name in bad faith. See Freistaat Bayern v. Registration Private, Domains by Proxy. LLC / Jerry Anderson, 3X Domains, WIPO Case No. D2015-2122.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

While the Complainant has not submitted trademark registrations, it has submitted ample evidence that it may claim prior common law rights in the PHILIP MORRIS trademark through its century of use of the name. Additionally, previous panels have found that the PHILIP MORRIS name is famous. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. 2016-0840.

The second level of the disputed domain name, “philpmorris”, is identical to the Complainant’s trademark with the deletion of the single letter “l”. The Panel takes notice of the fact that when one enters “philpmorris” as a search term in the Google search engine, one is prompted by “Did you mean: ‘philip morris’ ?”. In the absence of any other evidence or argument from the Respondent, the Panel accepts that the disputed domain name is so similar to the Complainant’s trademark that it could easily confuse the reader as being that of the Complainant, or could lead to confusion that the disputed domain name had some association with the Complainant’s trademark when in fact it does not. The Panel therefore concludes that the disputed domain name is confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no form of association with the Complainant that would allow it to utilize the Complainant’s trademark. Furthermore, the Respondent’s organization name is not reflected in the disputed domain name. The Complainant has made a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, thus shifting the burden of production on to the Respondent. See Philip Morris USA Inc. v. Mary Shelly, WIPO Case No. D2006-1367.

The Respondent has not responded to the Complainant’s contentions. The disputed domain name <philpmorris.com> immediately connotes for this Panel a website from or authorized by the Philip Morris company. Thus, it is hard to envision any fair use by an unauthorized third-party. In light of the Complainant’s unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is easily demonstrated by referencing the numerous UDRP decisions holding as such, that the Complainant’s PHILIP MORRIS trademark is a famous trademark. It is beyond coincidence that Respondent could select the disputed domain name without knowing of Complainant’s rights. Respondent’s offer to sell the disputed domain name is further demonstration of its bad faith.

The Panel may also draw negative inferences against the Respondent from its default.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has met the requirements of 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, <philpmorris.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: January 23, 2017