WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Noah Makower

Case No. D2017-0896

1. The Parties

The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America represented by Arnold & Porter Kaye Scholer LLP, United States of America.

The Respondent is Noah Makower of Edinburgh, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <phillipmorris.global> (the “Domain Name”) is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2017. The same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. The Respondent sent an email to the Center on May 9, 2017. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties on the Commencement of Panel Appointment Process on May 29, 2017.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 8, 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 manufactures, markets and sells tobacco products. The Complainant has used the company name “Philip Morris” continuously throughout the United States and the world for over a century. The public associates “Philip Morris” with the Complainant as a company and with the Complainant’s tobacco products. The Complainant has registered several Internet domain names incorporating “Philip Morris”, including: <philipmorris.com>, <philipmorris.net>, <philipmorris.org> and <philipmorris.info>.

The Domain Name was registered on March 17, 2017. At the time of filing of the Complaint, the Domain Name resolved to a website under construction with the text “This site can’t be reached”. At the time of drafting this decision, the Domain Name resolves to a parkingpage with sponsored links to third parties. The Domain Name registration expires March 17, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it is a well-established principle under United Statesintellectual property law that company or trade names may give rise to trademark rights affording the owner the same protections as any other trademark in certain instances. This principle is reflected in numerous decisions pursuant to the Policy, see, e.g., Sintef v. Sintef.com, WIPO Case No. D2001-0507 (June 9, 2001). The Complainant moves on to argue that the Domain Name is confusingly similar to the Complainant’s name as the Domain Name incorporates the Complainant’s company name in its entirety.

The Complainant argues that the Respondent is not licensed or otherwise authorized to use the Complainant’s name. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that the Respondent has no connection or affiliation with the Complainant, its affiliates, or any of the many products provided by the Complainant. To the Complainant’s knowledge, the Respondent has never sought or obtained any trademark registrations for “Phillip Morris” or any variation thereof.

As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s rights in “Philip Morris” at the time of the registration of the Domain Name. It is inconceivable that the Respondent registered the Domain Name without knowledge of the Complainant’s rights. Moreover, even if it had been the case, a simple Internet search would have revealed the Complainant’s use of “Philip Morris” as a source identifier for its tobacco products. Further, the Respondent uses the Domain Name to divert Internet users from the Complainant’s website by creating a likelihood of confusion with the Complainant. The fact that the Respondent has failed to make active legitimate noncommercial or fair use of the Domain Name points to bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that the company name “Philip Morris” has become a distinctive identifier associated with the Complainant or its goods or services. Several UDRP panels have recognized the Complainant’s rights in the Philip Morris name, see, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840 (“The Panel recognizes that the term ‘Philip Morris’ has become uniquely associated with and distinctively identifies the Complainant and its tobacco products”).

For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.global”. The Domain Name is identical to PHILIP MORRIS in which the Complainant has common law trademark rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its name or otherwise make use of it. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. At the time of the Complaint submission, the Domain Name was inactive and it currently resolves to a parking page with sponsored links to third parties. This appears not to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use within the meaning of the Policy.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent must have been aware of the Complainant and its business when the Respondent registered the Domain Name. It is indeed inconceivable that the Respondent registered the identical Domain Name without knowledge of the Complainant’s rights.

The Respondent currently uses the Domain Name to divert Internet users from the Complainant’s website by creating a likelihood of confusion with the Complainant. The fact that the Respondent has failed to make any legitimate noncommercial or fair use of the Domain Name supports a finding of bad faith use.

The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Name in bad faith. This is supported by the fact that the Respondent has not responded to the Complainant’s contentions.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name, <phillipmorris.global>, be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: June 20, 2017