WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel

Case No. D2015-1034

1. The Parties

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

Respondent is Contact Privacy Inc. of Toronto, Canada / Boubli Emmanuel of Marseille, France. ¹

2. The Domain Name and Registrar

The disputed domain name <phillipmorris.info> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day 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 June 26, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 26, 2015.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2015. Respondent submitted informal email communications to the Center on June 29, 2015, July 5, 2015 and July 16, 2015. Respondent did not submit a formal response. Accordingly, the Center notified the Parties that it would proceed to appoint an administrative Panel in this matter on July 21, 2015.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 27, 2015. 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

Complainant is a corporation organized and existing under the laws of Virginia, United States of America, with its principle place of business in Richmond, Virginia, United States of America. It is active in the tobacco industry.

In order to evidence its unregistered trademark rights in the designation “Philip Morris”, Complainant has provided the following evidence:

- Excerpts from the Annual Report (form 10-K) as of December 31, 2014 filed with the United States Securities and Exchange Commission by Complainant’s parent company Altria Group, Inc., according to which Complainant’s revenues for the fiscal year 2014 exceeded USD 21 billion and total assets for the same period exceeded USD 10 billion;

- Various United States press articles claiming that Complainant is one of the largest US cigarette makers.

Moreover, Complainant has evidenced to be the owner, inter alia, of the domain names <philipmorris.com>, <philipmorris.net> as well as <philipmorris.org>; the domain name <philipmorris.com> redirects to Complainant’s parent company’s website at “www.altria.com” providing general information about Complainant’s business and products.

The disputed domain name was registered on March 2, 2015 and does not resolve to any content.

Respondent sent various emails to the Center on June 29, July 5 and July 16, 2015 in the French language, claiming, inter alia, that he did not use the disputed domain name, that he did not know about Complainant before registering the disputed domain name, and that he would prefer to communicate in French.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends to have used the PHILIP MORRIS trademark continuously throughout the United States for over a century both as a company name as well as a brand name, and that the public has come to associate the PHILIP MORRIS trademark with Complainant as a company and with Complainant’s tobacco products. Complainant, therefore, claims to have unregistered trademark rights in the designation “Philip Morris” because (1) it is a well-established principle under US intellectual property law that company or trade names may give rise to trademark rights, (2) this principle is reflected in many decisions pursuant to the Policy and several UDRP panels recently acknowledged Complainant’s unregistered trademark rights in PHILIP MORRIS and (3) there is widespread recognition of Complainant in the media, which closely associates Complainant with the tobacco products that it manufactures and sells.

Complainant suggests that the disputed domain name is confusingly similar to Complainant’s PHILIP MORRIS trademark, as it incorporates the trademark in its entirety with a deliberate misspelling thereof, namely “Phillip” with two “Ls” as opposed to Complainant’s “Philip” with only one “L”.

Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has no connection or affiliation with Complainant, its parent company or affiliates, or the products marketed and sold by Complainant under PHILIP MORRIS, (2) Respondent was never known by any name or trade name that incorporates PHILIP MORRIS, (3) Respondent has not received any license, authorization or consent – express or implied – to use PHILIP MORRIS in a domain name or in any other manner and finally (4) Respondent fails to make any use of the disputed domain name and such passive holding does not give rise to any rights or legitimate interests therein.

Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since (1) given the widespread recognition of PHILIP MORRIS in the media, it must be assumed that Respondent registered the disputed domain name with full knowledge of Complainant’s trademark rights therein, (2) Respondent’s uses a misspelling of PHILIP MORRIS with two “Ls” in the disputed domain name, and, finally (3) Respondent apparently used the identity-shielding service to prevent himself from being held accountable for his infringing use of the disputed domain name.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. His informal email communications, as stated above in the Factual Background, indicated that he did not use the disputed domain name and that he did not know about Complainant before registering the disputed domain name.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

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

(ii) That 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

The Panel concludes that the disputed domain name <phillipmorris.com> is confusingly similar to the PHILIP MORRIS trademark in which Complainant has shown to have rights.

1. Complainant’s unregistered trademark rights in the designation “Philip Morris”

It is a consensus view among UDRP panels that a complainant can successfully assert UDRP-relevant unregistered trademark rights e.g., in a company name provided that complainant shows that such name has become a distinctive identifier associated with either complainant or its goods and services due to e.g., length and amount of sales under the corresponding trademark, the nature and extent of advertising, consumer surveys and media recognition (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 1.6 and 1.7). Complainant contends, and Respondent has not challenged this contention, that Complainant has used PHILIP MORRIS as a company name as well as a brand name and trademark continuously throughout the United States for over a century and that the public has come to associate PHILIP MORRIS with Complainant and with its tobacco products. Complainant has provided evidence according to which it has generated considerable revenues in 2014 exceeding USD 21 billion in connection with the manufacturing and selling of tobacco products. Also, Complainant has submitted several United States press articles certifying Complainant to be one of the largest (if not the largest) cigarette makers in the country.

Accordingly, and the Panel agrees with these findings, 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 (see e.g., Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182).

2. Confusing Similarity

The disputed domain name incorporates the PHILIP MORRIS trademark in its entirety, with the simple misspelling of a double letter L. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is at least confusingly similar to a trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain name obviously includes a simple misspelling of Complainant’s PHILIP MORRIS trademark varying from the correct version by just one added letter “L” is not at all inconsistent with such findings of confusing similarity. Typo-squatted domain names are on the contrary intended to be confusing so that Internet users, who unwittingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelled trademark (see e.g., National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).

Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that, on the basis of Complainant’s undisputed contentions, Respondent has neither made use of the disputed domain name in connection with a bona fide offering of goods or services nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use thereof.

Respondent has not been authorized to use Complainant’s PHILIP MORRIS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds to the disputed domain name.

Finally, Respondent has neither made use of the disputed domain name for a bona fide offering of goods or services nor for a legitimate, noncommercial or fair purpose. Respondent himself has confirmed in his emails to the Center of June 29 and July 5, 2015 not to have used the disputed domain name at all. It has been held by many UDRP panels that passive holding of a domain name in itself is typically not capable of creating any rights or legitimate interests therein (see e.g., Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729).

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not formally reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on June 29, 2015, nor did he come forward with any other reasonable explanation e.g., in his emails of June 29, July 5, 2015 and July 16, 2015 that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The Panel agrees with Complainant that given the widespread recognition of PHILIP MORRIS in the media, it must be assumed that Respondent registered the disputed domain name with full knowledge of Complainant’s trademark rights therein. This conclusion can be derived from the findings of several prior UDRP panels that the PHILIP MORRIS trademark is well-known in the tobacco industry, with international recognition throughout the world. Moreover, the fact that the disputed domain name is an obvious misspelling of Complainant’s famous trademark by a simple doubling of the letter “L” is a further indication that Respondent registered the disputed domain name in full knowledge of Complainant’s famous PHILIP MORRIS trademark. The Panel disbelieves Respondent’s allegation that he was not aware of the company “Philipe Maurice” at the time of registering the disputed domain name <phillipmorris.com>, since the disputed domain name itself clearly evidences the contrary. The Panel takes notice of the fact that the disputed domain name is passively held. There is, however, a consensus view among UDRP panels that such passive holding does not prevent a finding of bad faith if an examination of all the circumstances of a case still indicates that respondent is acting in bad faith. Indicative circumstances may be that complainant has a well-known trademark and that respondent has concealed his identity (see WIPO Overview 2.0, paragraph 3.2). Since these circumstances are fulfilled in the case at hand, and in the absence of any reasonable explanation as to why Respondent should rely on the disputed domain name, the Panel has no difficulty in finding that Respondent has registered and uses the disputed domain name in a manner which at least takes unjustified and unfair advantage of the PHILIP MORRIS trademark and must, therefore, be considered as registration and use in bad faith within the meaning of the Policy.

In this context, the Panel also takes into account that Respondent not only made use of a WhoIs privacy service in order to conceal his true identity, but apparently also provided false WhoIs information since the delivery of the Written Notice of Complaint sent by the Center to Respondent via courier on June 29, 2015 failed because of an incorrect address and telephone number. These facts taken altogether throw a light on Respondent’s behavior which supports the finding of a registration and use of the disputed domain name in bad faith.

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <phillipmorris.info> be transferred to Complainant.

Stephanie Hartung
Sole Panelist
Date: July 30, 2015

¹ In accordance with Complainant’s amended Complaint of June 26, 2015, the term “Respondent“ as used by the Panel in the case at hand refers exclusively to Boubli Emmanuel of Marseille, France, who was confirmed by the Registrar on June 17, 2015 to be the underlying Registrant of the disputed domain name.