WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Brands Sàrl v. Young, Young Mason

Case No. D2019-2727

1. The Parties

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

The Respondent is Young, Young Mason, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pmi-ch.com> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2019, 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 November 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 3, 2020. 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 is part of the group of companies affiliated to Philip Morris International Inc., which is a leading international tobacco company selling its products in approximately 180 countries.

The Complainant is the owner of the following trademarks registrations (the “PMI trademark”):

- the International trademark PMI with registration No. 956639, registered on February 7, 2008 for goods in International class 34; and

- the Swiss trademark PMI with registration No. P-559746, registered on July 17, 2007 for goods in International class 34.

The Complainant’s corporate website is located at the domain name <pmi.com>.

The disputed domain name was registered on October 26, 2019. The website at the disputed domain name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PMI trademark, and the addition of the generic country code “ch” in the disputed domain name is not sufficient to avoid a finding of confusing similarity.

According to the Complainant, the Respondent lacks rights and legitimate interests in the disputed domain name, as the Complainant has not permitted the Respondent to use the PMI trademark or to register domain names that incorporate it, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but uses it to send fraudulent email messages that have the appearance to have been signed by the Complainant’s Chief Financial Officer from an email address that incorporates his name in order to deceive the recipients of these emails that is a legitimate email from the Complainant. The Complainant explains that such emails have been sent to employees of the Complainant and have contained instructions for making certain payments.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

It points out that the Respondent knew of the Complainant’s PMI trademark when registering the disputed domain name, which fact is obvious given the Respondent’s fraudulent use of the name and signature of the Complainant’s Chief Financial Officer. According to the Complainant, the Respondent registered and used the disputed domain name in bad faith to impersonate the Complainant and its Chief Financial Officer as part of a fraudulent scheme.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent has not submitted a Response and has not denied the contentions of the Complainant.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the PMI trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “pmi-ch”. It consists of the elements “pmi” and “ch”, separated by a hyphen. The “pmi” element is identical to the PMI trademark, which is clearly recognizable in the disputed domain name, and the addition of the geographic indication “ch” to it does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the PMI trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant has not permitted the Respondent to use the PMI trademark or to register domain names that incorporate it, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but uses it to send fraudulent email messages that have the appearance to have been sent by the Complainant’s Chief Financial Officer in order to mislead the recipients of these emails to make certain payments. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is confusingly similar to the PMI trademark. The undisputed evidence shows that the Respondent has attempted to impersonate the Complainant’s Chief Financial Officer and cause the employees of the Complainant to make certain payments. Such conduct is per se illegitimate and can never confer rights or legitimate interests in the disputed domain name on the Respondent. See section 2.12 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The disputed domain name is confusingly similar to the PMI trademark. As discussed in section 6.B above, the undisputed evidence shows that the Respondent has attempted to impersonate the Complainant’s Chief Financial Officer and cause the employees of the Complainant to make certain payments. Being per se illegitimate, such conduct is manifest evidence of bad faith registration and use of the disputed domain name. See section 3.1.4 of the WIPO Overview 3.0.

Taking the above into account, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

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 <pmi-ch.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 17, 2020