WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Doug Nedwin/SRSPlus Private Registration

Case No. D2014-0339

1. The Parties

Complainant is Philip Morris USA Inc. of Richmond, Virginia, United States of America (“United States”), represented by Arnold & Porter, United States.

Respondent is Doug Nedwin of New City, New York, United States; SRSPlus Private Registration of Drums, Pennsylvania, United States.

2. The Domain Name and Registrar

The disputed domain name <phillip-morris.com> (“Disputed Domain Name”) is registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2014. On March 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from named Respondent and contact information in the Complaint.

The Center sent an email communication to Complainant on March 12, 2014, providing the registrant and contact information disclosed by the Registrar and invited Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 13, 2014.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 14, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on April 4, 2014.

The Center appointed Michael A. Albert as the sole panelist in this matter on April 14, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

Complainant is a corporation organized and existing under the laws of the commonwealth of Virginia who has operated under the trade name “Philip Morris” for over 25 years in the manufacture and sale of tobacco products.

Complainant has registered several Internet domain names incorporating its trade name “Philip Morris”. These domain names include: <philipmorris.com>; <philipmorris.net>; <philipmorris.org>; and <philipmorris.info>.

The United States Patent and Trademark Office (the “USPTO”) regards PHILIP MORRIS as incorporated within two federal trademark registrations. See USPTO Registration Nos. 3,533,466 and 3,533,419.

The Disputed Domain Name was registered on June 29, 2013.

5. Parties’ Contentions

A. Complainant

Complainant is a large, well-known tobacco company and its “Philip Morris” trade name is widely associated with the manufacture and sales of tobacco products throughout the United States.

Complainant contends that the Disputed Domain Name incorporates and is confusingly similar to Complainant’s “Philip Morris” trade name in which Complainant has common law trademark rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.

Complainant contends that the Disputed Domain Name fully incorporates its “Philip Morris” trade name. Complainant observes that the only differences between Complainant’s trade name and the Disputed Domain Name are the addition of an addition “l” in “Philip”, the addition of a hyphen between “Philip” and “Morris,” and the addition of the generic Top-Level Domain (gTLD) reference “.com”.

Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. Complainant contends that Respondent has no connection or affiliation with Complainant, Complainant’s parent company or affiliates, or the products marketed and sold by Complainant. Further, Complainant argues that Respondent has not received any license, authorization, or consent to use the “Philip Morris” trade name in a domain name or any other matter.

Complainant also contends that Respondent was never known by any name or trade name that incorporates the name “Philip Morris” or the similar “Phillip-Morris”. Complainant contends that Respondent has never sought or obtained any trademark registrations for the Disputed Domain Name or any variations thereof.

Complainant further alleges that Respondent’s registration and use of the Disputed Domain Name occurred in bad faith. Respondent’s Disputed Domain Name includes reference to a Wikipedia entry about Complainant’s company. Complainant alleges that this is evidence that Respondent is attempting to garner attention from Internet users searching for Complainant’s products and that Respondent seeks to dupe consumers into believing that Complainant is associated with Respondent’s Disputed Domain Name and corresponding website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a Disputed Domain Name should be cancelled or transferred:

(i) the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Respondent provided no Response, and the deadline for so doing expired on April 3, 2014. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel must first address the issue of whether Complainant has rights in the trademark on which it relies under paragraph 4(a)(i) of the Policy. See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 (defining whether complainant has rights in the trademark or service mark on which it relies as a threshold issue under paragraph 4(a)(i) of the Policy). Here, Complainant relies on rights in the trade name “Philip Morris” in addition to registered trademarks incorporating this trade name.

Prior UDRP panels have held that it is possible to obtain unregistered trademark rights to a trade name sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy. G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0783 (reasoning that “it is possible to obtain unregistered trademark and/or service mark rights to a trade name and unregistered trademark and/or service mark rights are sufficient for the purposes of paragraph 4(a)(i) of the Policy”); see also Nu Mark LLC v. Bui, Long, WIPO Case No. D2013-1785 (finding complainant’s trade name “Nu Mark” had become a distinctive identifier associated with its business and products on its website and thus demonstrated complainant’s unregistered trademark rights).

Further, prior UDRP panels have found the use of a term in connection with specific products can give rise to unregistered trademark rights. See Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (finding that complainant demonstrated unregistered trademark rights in a term based on evidence that complainant had been using the mark in association with its business for years prior to the registration of the domain name in dispute); see also Endeavors Technology, Inc. v. Dick In Jar, WIPO Case No. D2001-0770 (finding that complainant’s use of a term as a trade name in connection with its product on its website was sufficient evidence that complainant had tied its business name to its product in advertising and promotion and, consequently, was sufficient evidence of complainant’s rights in the trade name as an unregistered trademark).

In the case at hand, Complainant’s trade name has been in use for over 25 years. Complainant uses and incorporates its trade name into all of its various websites cited above. Further, Complainant submitted articles referring to its widespread recognition within the United States, demonstrating a close association with the “Philip Morris” trade name and the tobacco products it manufactures and sells. In addition to this evidence demonstrating the recognition of an unregistered trademark, Complainant submitted evidence of the incorporation of the name PHILIP MORRIS into two of its existing USPTO trademark registrations.

Based on this evidence, the Panel finds that Complainant has common law trademark rights in the PHILIP MORRIS trade name.

The Panel must next determine whether the Disputed Domain Name and Complainant’s unregistered trademark are confusingly similar, as the Disputed Domain Name and Complainant’s unregistered trademark are not identical.

The Disputed Domain Name combines four elements: (1) Complainant’s PHILIP MORRIS trademark; (2) the addition of a second “l” within “Philip”; (3) the addition of a hyphen between “Phillip” and “Morris”; and; (4) the gTLD “.com”. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “phillip-morris”), as it is well-established that the gTLD (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005 0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000 0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR). Here, the Disputed Domain Name incorporates Complainant’s unregistered trademark in which it has rights in its entirety, with an additional letter and symbol.

Moreover, the addition of the letter “l” in the Disputed Domain Name represents a simple misspelling of Complainant’s unregistered trademark and thus, does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s unregistered trademark in PHILIP MORRIS. See United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (finding that the addition of an “l” in complainant’s trademark DILBERT did not prevent the domain name from being considered virtually identical or confusingly similar to complainant’s trademark).

Lastly, prior UDRP panel decisions have found that the addition of a hyphen to a complainant’s mark does not distinguish the disputed domain name from the mark. See InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (“The addition of a hyphen and .com are not distinguishing features”.); see also Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684 (finding “the addition of hyphens between each letter does not alter the visual or phonetic similarity between the Domain Name and the SMIRNOFF Marks”).

For all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s unregistered PHILIP MORRIS trademark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in the Disputed Domain Name may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Complainant contends that Respondent has no rights or legitimate interests to use the PHILIP MORRIS trade name or unregistered trademark. Complainant has alleged, and Respondent has not denied, that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name, and is seeking to benefit from Internet traffic directed to Respondent’s website associated with the Disputed Domain Name to profit from the goodwill and established reputation of Complainant.

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel is convinced that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Registration in Bad Faith

Complainant contends, and Respondent does not dispute, that Complainant’s notoriety and established tobacco product manufacturing and sales activities within the United States over the last century indicate that Respondent knew or should have known of Complainant’s rights in PHILIP MORRIS and, thus, constitute evidence of registration in bad faith.

The Disputed Domain Name was registered on June 29, 2013, by which time Complainant had been manufacturing and selling tobacco products under the name “Philip Morris” for approximately 25 years.

Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.

Use in Bad Faith

The Panel also finds that Respondent used the Disputed Domain Name in bad faith.

Complainant properly alleged, and Respondent has not contested, that Respondent registered and used the Disputed Domain Name to attract Internet users to Respondent’s website, which included a link to a Wikipedia page referring to Complainant’s business and products. The Panel finds that sufficiently demonstrates that Respondent attempted to attract Internet users to its site by creating a likelihood of confusion with Complainant’s unregistered trademark in PHILIP MORRIS as to the source, sponsorship, and affiliation of Respondent’s website.

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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, <phillip-morris.com>, be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: May 1, 2014