The Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Reza Zarif of Dubai, United Arab Emirates (the “First Respondent”) and Farhad Mosiond of Tehran, Islamic Republic of Iran (the “Second Respondent”).
The disputed domain name, <philipe-morris.com> (the “First Domain Name”), is registered with 1API GmbH (the “First Registrar”). The disputed domain name, <philipemorris.info> (the “Second Domain Name”), is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Second Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 21, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 24, 2018, the First Registrar transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant and providing the contact details. On September 25, 2018, the Second Registrar transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on September 26, 2018 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 3, 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 Respondents of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 1, 2018.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 9, 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.
The Complainant has requested that the Domain Names be dealt with together on the basis that although they appear from the Registrars’ WhoIs records to be held by different people situated in different countries, they are in fact held by the same person or, failing that, are under common control, the same email address having been given as the contact email address for both the Domain Names. The Panel deals with the issue in more detail in Section 6B below, but has decided to grant the Complainant’s request.
The Complainant is a United States corporation that has traded internationally under the “Philip Morris” name for over one hundred years.
The First Domain Name was registered on February 5, 2018. The Second Domain Name was registered on September 10, 2016. Neither of the Domain Names is connected to an active website.
The Complainant contends that the Domain Names are identical or confusingly similar to its PHILIP MORRIS trade mark, a trade mark in respect of which it claims unregistered trade mark rights; that the Respondents have no rights or legitimate interests in respect of the Domain Names; and that the Domain Names have been registered are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
The Complaint is in respect of two domain names. The First Domain Name is held in the name of the First Respondent with an address in the United Arab Emirates. The Second Domain Name is held in the name of the Second Respondent with an address in the Islamic Republic of Iran. Paragraph 3(c) of the Rules provides that “The Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainant contends that the registrant or registrants of the Domain Names are either one and the same person or, failing that, that the Domain Names are under common control and that it would be fair and equitable to all parties to deal with both Domain Names in this administrative procedure. The Complainant has produced evidence to support its contention in this regard. The extracts from the Registrars’ databases for the Domain Names show that the contact email address provided for each of the Domain Names is the same and features within it the name of the Second Respondent.
The Respondents have had the opportunity to challenge the Complainants’ contention, but have not availed themselves of that opportunity.
Paragraph 10(e) of the Rules provides that “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” The Panel finds on the balance of probabilities that the Second Respondent is the registrant of both Domain Names and/or is the controlling force behind both registrations and that it is appropriate that the Complainant’s complaints in respect of the Domain Names should be consolidated and heard together.
The Complainant relies upon its claimed common law or unregistered trade mark rights acquired over long and continuous use of the name “Philip Morris”. The Complaint features none of the evidence normally filed in support of such rights (e.g. sales and advertising figures over a period of years), but the Complainant has cited a number of previous decisions under the Policy in which panels have found that the Complainant has such rights in respect of the mark PHILIP MORRIS. Added to which the Panel has long been aware of the existence of the Complainant’s PHILIP MORRIS brand.
The Panel finds that the Respondent has trade mark rights in respect of the mark PHILIP MORRIS for purposes of the Policy.
The next issue to be addressed is as to whether the Domain Names are identical or confusingly similar to the Complainant’s PHILIP MORRIS trade mark.
The confusing similarity test is explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The first three paragraphs of that section read as follows:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Domain Names (absent the “.com” generic Top-Level Domain identifier, which may be ignored for this purpose) each comprise a slight variant of the Complainant’s trade mark, “Philipe” in place of “Philip”. On any basis the Complainant’s PHILIP MORRIS trade mark is readily recognizable in the Domain Names. The Panel finds that the Domain Names are confusingly similar to the Complainant’s trade mark for the purposes of paragraph 4(a)(i) of the Policy.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has demonstrated to the satisfaction of the Panel that its trade mark PHILIP MORRIS is well-known internationally (largely from the cited decisions of other panels in previous cases involving the Complainant); that the Respondents are not using the Domain Names in any way; and that the Respondents, on the publicly available record, have no association with the name “Philip Morris” or any variant of it. Their names on the record are wholly different.
Thus the Complainant has demonstrated to the satisfaction of the Panel that it has made out a prima facie case under this element of the Policy, a case calling for an answer from the Respondents. The Respondents have not come forward with any answer.
In the absence of any explanation from the Respondents, the Panel cannot conceive of any reason why the Respondents should be said to have rights or legitimate interests in respect of the Domain Names and the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
On the record before the Panel, the Respondents have adopted domain names, which are substantially identical to the Complainant’s PHILIP MORRIS trade mark and in respect of which they have neither rights nor legitimate interests.
What was the Respondents’ motive in registering the Domain Names? Annex 6 to the Complaint features what is claimed to be a DomainTools list of domain names held in the names of the Respondents. The Panel sees no reason to doubt the authenticity of the document and the claim made in respect of it. Certainly, the Respondents have chosen not to challenge it. The list comprises in excess of 3,000 domain names, the first six of which are <applestorearmitaj.com>, <burberryoutletonline.com.co>, <denisney.com>, <ebayfa.com>, <hyundaikala.com> and <iran-honda.com>.
From this the Panel deduces that the Respondents and/or the controlling entity behind them are dealers in domain names and that they are not averse to registering domain names featuring the trade marks of third parties and/or variants of those trade marks. There is nothing inherently objectionable in registering domain names with the intention of monetizing them, but doing so with a view to targeting the trade marks of others is the vice at which the Policy is directed. The Panel is in no doubt that the Respondents registered the Domain Names with the Complainant’s PHILIP MORRIS trade mark firmly in mind and with a view to targeting that trade mark. Thus, the Panel finds that the Respondents registered the Domain Names in bad faith.
However, that is not the end of the matter. This, the Third Element of the Policy, requires not only that the Domain Names were registered in bad faith, but that they are also being used in bad faith. Here, on the record before the Panel, the Domain Names are not being used to connect to active websites. They do not appear to be being used in any active sense.
Section 3.3 of WIPO Overview 3.0 dealing with the question: “Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?” answers the question as follows:
“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.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (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 or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, the Complainant’s trade mark is highly distinctive, the Respondents have not filed a Response, the contact details for the Domain Names raise questions as to their accuracy and the Panel cannot conceive of any plausible good faith use to which the Respondents can put the Domain Names. In the view of the Panel the presence of the Domain Names in the hands of the Respondents represents an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondents at any time) and therefore a continuing abusive use.
The Panel finds that the Domain Names have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <philipe-morris.com> and <philipemorris.info>, be transferred to the Complainant.
Date: November 19, 2018
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