WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Brands Sàrl v. Edgar Gonzalez

Case No. D2018-2467

1. The Parties

The Complainant is Philip Morris Brands Sàrl of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Edgar González of Zapopan, Jalisco, Mexico.

2. The Domain Name and Registrar

The disputed domain name <philipmorrismx.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 November 1, 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 amendment to the Complaint on November 5, 2018.

The Center verified that the Complaint together with the amendment to 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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. An informal email communication from the Respondent was received by the Center on November 5, 2018. A second informal email communication from the Respondent was received by the Center on November 10, 2018. No further communication from the Respondent was submitted. The Center notified the Parties that it would proceed to panel appointment on December 3, 2018.

The Center appointed Alejandro Touriño as the sole panelist in this matter on December 17, 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, Philip Morris Brands SàrI, is part of the group of companies affiliated to Philip Morris International Inc., which is a leading international tobacco company, operating in more than 180 markets.

The Complainant is the owner of a large portfolio of trademark registrations around the world. In particular, the Complainant is the owner of the following trademarks:

- Mexican trademark No. 263494: PHILIP MORRIS (word), registered on July, 27 1981, for classes 34 and 17;

- UK trademark No. 00000584669: PHILIP MORRIS (word), registered on April 2 1938, for class 34.

The companies affiliated to Philip Morris International Inc. operate various domain names to promote goods and services of the company: ˂philipmorrisinternational.com˃ (registered on February 7, 2002), ˂pmi.com˃ (registered on January 22, 1997), ˂philipmorris.com˃ (registered on August 8, 1995), <philipmorris.net> (registered on December 27, 2001), <philipmorris.org> (registered on February 21, 2002), <philipmorris.info> (registered on August 3, 2001) and many others.

According to the current record, the disputed domain name <philipmorrismx.com> was registered on September 14, 2018.

The disputed domain name appears to have been used in connection with a fraudulent email scheme. As at the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant is a subsidiary of Philip Morris International, Inc., the leading international tobacco company, owner of a large portfolio of registered trademarks and related brand name PHILIP MORRIS. The Complainant’s PHILIP MORRIS trademark has been acknowledged as well-known by numerous UDRP decisions. The disputed domain name <philipmorrismx.com> is confusingly similar to the Complainant’s PHILIP MORRIS trademark, since the addition of the geographical term “mx” is insufficient to avoid a finding of confusing similarity under the first element of the UDRP.

The Respondent does not have a legitimate interest in the disputed domain name under the second element of the UDRP. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name incorporating its PHILIP MORRIS trademark. The Respondent is not known or in any way related to the Complainant and is not authorized to use the PHILIP MORRIS trademarks. The Respondent is not providing any accurate information on his identity in the WhoIs information.

The Respondent registered and used the disputed domain name in bad faith. The Respondent knew of the Complainant’s PHILIP MORRIS trademark when registering the disputed domain name. The disputed domain name has been used as part of a fraudulent scheme, tricking consumers into providing funds by purporting to be the Complainant in Mexico, and apparently offering vehicles for sale.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, two informal email communications from the Respondent were addressed to the Center on November 5 and 10, 2018. The content of said communications appeals to the ignorance of the Rules by the Respondent.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To satisfy paragraph 4(a)(i) of the Policy, the Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

In the case at hand, the Complainant has evidenced to own trademarks registrations for PHILIP MORRIS since 1938. The disputed domain name wholly includes the Complainant’s trademark PHILIP MORRIS, and the addition of the geographical term “mx” and the generic Top-Level Domain (“gTLD”) “.com” does not avoid a finding of confusing similarity. It is recognizable within the disputed domain name notwithstanding the insertion of both elements, that do not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

As explained at section 1.7 of the WIPO Overview 3.0: “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”. Section 1.8 of the WIPO Overview 3.0 also comments that; “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the PHILIP MORRIS trademark in which the Complainant has rights.

The first part of the paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. In particular, the Complainant has never given any permission and has never authorized the Respondent to use any of the Complainant’s trademarks. The Complainant does not have any relationship or association with the Respondent. The Respondent is not known by the disputed domain name, is not using it to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel also finds that the Respondent registered the disputed domain name long after the Complainant registered its PHILIP MORRIS trademark and long after the Complainant used its trademarks in commerce for the first time.

In view of the foregoing, the Panel accepts and adopts the Complainant’s submission that it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name. The Complainant has established a prima face case which the Respondent has not sought to rebut and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see WIPO Overview 3.0, section 2.1.

The Panel thus finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(ii) of the Policy the Complainant must establish that the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Complainant’s first registration for the PHILIP MORRIS trademark dates from 1938. The PHILIP MORRIS trademark has been in commercial use from its first registration until now. Also, the Complainant’s PHILIP MORRIS trademark has been acknowledged as well-known by numerous UDRP decisions. See, e.g., Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel, WIPO Case No. D2015-1034 (“several UDRP panels have recently held that the PHILIP MORRIS trademark is well-known and famous due to its widespread and extensive use in connection with Complainant’s tobacco products and have acknowledged Complainant’s unregistered trademark rights therein”); Philip Morris USA Inc. v. Dante Credaro, Two2face Corp., WIPO Case No. D2016-1627 (holding that: “PHILIP MORRIS is worldwide a well-known trademark closely associated with the Complainant’s name and tobacco products”). Consequently, it is likely that the Respondent knew of the existence of the Complainant’s trademark when it registered the disputed domain name, as it comprises of the Complainant’s mark in full.

In addition to this, the Respondent has registered the disputed domain name under a privacy service and refused to participate in the present proceeding in order to put forward relevant arguments in its support.

Furthermore, the Respondent has used the disputed domain name as part of a fraudulent scheme, tricking consumers into providing funds by purporting to be the Complainant in Mexico, and apparently offering vehicles for sale. Previously, several UDRP panels have concluded that email-based phishing schemes with use of a complainant’s trademark in domain names are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, WIPO Case No. D2015-1774; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383 (“there is once again precedent that such an activity [in connection with phishing activities] is an indication of bad faith”).

It is the Panel’s view that the Respondent’s registration and use of the disputed domain name constitutes a disruption of the Complainant’s business. The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and used the disputed domain name for commercial gain taking advantage of the Complainant’s well-known trademark.

For the above reasons the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel concludes that the third element of the Policy has been met.

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 <philipmorrismx.com> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: December 28, 2018