Philip Morris USA Inc. v. Lori Wagner
Claim Number: FA1312001534894
PARTIES
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is Lori Wagner (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philipmorrisintl.us>, registered with GODADDY.COM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2013; the National Arbitration Forum received a hard copy on December 16, 2013.
On December 17, 2013, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <philipmorrisintl.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 17, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on January 21, 2014.
Each of the parties timely filed Additional Submissions which were found to be compliant by the Forum and they were considered by the Panel.
On January 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
a) Complainant has rights in the PHILLIP MORRIS mark, which it has used for over a century in the United States. Complainant owns several domain names incorporating its mark, including <phillipmorris.com>, <phillipmorris.net>, <phillipmorris.org>, and <phillipmorris.info>. Through widespread, extensive use in connection with its products, the PHILLIP MORRIS mark is well-known and famous.
b) The <philipmorrisintl.us> domain name is confusingly similar to the PHILLIP MORRIS mark. The disputed domain name incorporates the PHILLIP MORRIS mark in its entirety, along with the generic term “intl,” an abbreviation for “international,” and the country-code top-level domain (“ccTLD”) “.us.”
c) Respondent is using the <philipmorrisintl.us> domain name to resolve to a parked website.
d) The <philipmorrisintl.us> domain name’s resolving website displays an offer to contact Respondent about the purchase of the disputed domain name.
e) Respondent’s lack of an active use of the disputed domain name demonstrates a lack of rights and legitimate interests.
f) The <philipmorrisintl.us> domain name was chosen to capitalize on the association of the PHILLIP MORRIS mark with the domain name. Respondent has created a likelihood of confusion and initial interest confusion by using a confusingly similar domain name, thus attracting Internet users to the <philipmorrisintl.us> domain name based on the PHILLIP MORRIS mark.
g) Respondent’s failure to use the domain name actively is further evidence of Respondent’s bad faith.
h) Respondent registered the <philipmorrisintl.us> domain name with full knowledge of Complainant’s rights in the PHILLIP MORRIS mark. This is clear given the fame of Complainant’s mark.
B. Respondent makes the following assertions:
a) The <philipmorrisintl.us> domain name is not confusingly similar to the PHILLIP MORRIS mark.
b) Respondent is not commonly known by the disputed domain name, since Respondent is not the owner of the trademark PHILLIP MORRIS.
c) The <philipmorrisintl.us> domain name is not used to sell or trade items that are similar to those of Complainant.
d) The <philipmorrisintl.us> domain name is parked by GoDaddy, but Respondent is planning to donate the domain name to a non-profit anti-smoking association for the use of their opinion about Complainant’s goods and services.
e) Respondent is not using the <philipmorrisintl.us> domain name to promote the sale of the disputed domain name. The domain name is parked with GoDaddy, and by clicking on the link purporting to propose an offer to sell the domain, what actually happens is that a GoDaddy agent is alerted and attempts to reach Respondent about their possible interest in selling the domain name. Respondent has no such interest, and Complainant could not prove that Respondent registered the domain with the intent of an eventual sale.
f) Respondent has no intention of using the disputed domain name for a commercial use or misleading consumers for a commercial gain and has never done so. Rather, Respondent has the intention of donating the disputed domain name to an anti-smoking, non-profit organization where it will be used for noncommercial consumer commentary about the products and services offered by Complainant. Respondent has never attempted to profit off of the <philipmorrisintl.us> domain name.
g) Complainant is attempting to reverse domain name hijack the <philipmorrisintl.us> domain name. Complainant’s submitted documents themselves demonstrate that Respondent has not infringed on the <philipmorrisintl.us> domain name, that no advertising was made on the <philipmorrisintl.us> domain name to Complainant’s competitors, that the <philipmorrisintl.us> domain name is and will always be used non-commercially, and that Respondent has never offered competing products or services via the <philipmorrisintl.us> domain name.
The Panel notes that the <philipmorrisintl.us> domain name was registered on October 2, 2013.
C. Additional Submissions:
Respondent argues that Complainant has not demonstrated evidence of Respondent's bad faith registration and use or of infringement and asserts that Respondent is correct in its position on California law and the Lanham Act.
Complainant has rights in the PHILLIP MORRIS mark, which it has used for over a century in the United States. Complainant owns several domain names incorporating its mark, including <phillipmorris.com>, <phillipmorris.net>, <phillipmorris.org>, and <phillipmorris.info>. Through widespread, extensive use in connection with its products, the PHILLIP MORRIS mark is well-known and famous. The <philipmorrisintl.us> domain name is confusingly similar to the PHILLIP MORRIS mark. The disputed domain name incorporates the PHILLIP MORRIS mark in its entirety, along with the generic term “intl,” and abbreviation for “international,” and the ccTLD “.us.”
Respondent is using the <philipmorrisintl.us> domain name to resolve to a parked website. The <philipmorrisintl.us> domain name’s resolving website displays an offer to contact Respondent about the purchase of the disputed domain name. Respondent’s lack of an active use of the disputed domain name demonstrates a lack of rights and legitimate interests. The <philipmorrisintl.us> domain name was chosen to capitalize on the association of the PHILLIP MORRIS mark with the domain name. Respondent has created a likelihood of confusion and initial interest confusion by using a confusingly similar domain name, thus attracting Internet users to the <philipmorrisintl.us> domain name based on the PHILLIP MORRIS mark. Respondent’s failure to use the domain name actively is further evidence of Respondent’s bad faith. Respondent registered the <philipmorrisintl.us> domain name with full knowledge of Complainant’s rights in the PHILLIP MORRIS mark.
There is no evidence of reverse domain name hijacking.
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 domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering it’s decision.
Complainant has rights in PHILLIP MORRIS mark. The Panel notes that, while Complainant does not base its rights on registration of the mark, registration of a trademark is unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Therefore, the Panel may consider Complainant’s assertions regarding common law rights as a means to satisfy Policy ¶ 4(a)(i).
Complainant has used the PHILLIP MORRIS mark for over a century in the United States, and it it owns several domain names incorporating its mark, including <phillipmorris.com>, <phillipmorris.net>, <phillipmorris.org>, and <phillipmorris.info>. Through widespread, extensive use in connection with its products, the PHILLIP MORRIS mark is well-known and famous. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the panel found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. Similarly, the Panel finds that Complainant has common law rights in the PHILLIP MORRIS mark under Policy ¶ 4(a)(i).
The <philipmorrisintl.us> domain name is confusingly similar to the PHILLIP MORRIS mark. The disputed domain name incorporates the PHILLIP MORRIS mark in its entirety, along with the generic term “intl,” an abbreviation for “international,” and the ccTLD “.us.” The Panel notes the decision in Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003), where the panel found the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark, despite the omission of a space and the addition of a generic term and the ccTLD .us. Therefore, Respondent’s <philipmorrisintl.us> domain name is confusingly similar to the PHILLIP MORRIS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence in the record that Respondent owns any service marks or trademarks that reflect the <philipmorrisintl.us> domain name. Therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Respondent is using the <philipmorrisintl.us> domain name to resolve to a parked website and thus is failing to make an active use of the domain. However, the Panel notes that a review of the screenshot provided by Complainant of the <philipmorrisintl.us> domain name’s resolving website shows that the website hosts links for visitors to buy other domain names, and thus the domain is not inactive. Panels have found that the use of a domain name to display unrelated links is evidence of a lack of rights and legitimate interests. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under UDRP ¶ 4(c)(i)). Therefore, Respondent’s use of the <philipmorrisintl.us> domain name to display unrelated links is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Further, Respondent’s displayed solicitation of offers to purchase the <philipmorrisintl.us> domain name demonstrates Respondent’s lack of rights and legitimate interests. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel concluded that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii). Accordingly, the Panel finds this to be further evidence of Respondent’s lack of both rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The <philipmorrisintl.us> domain name displays a notice that Internet users need only click there to be put in contact with Respondent so the Internet user may make an offer to purchase the domain name. In Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panel found that the attempted sale of a domain name is evidence of bad faith. Accordingly, the Panel finds that Respondent willingness to sell the <philipmorrisintl.us> domain name is evidence of bad faith registration or use under Policy ¶ 4(b)(i).
Respondent’s failure to use the domain name actively is further evidence of Respondent’s bad faith. However, the domain name is not used completely inactively, but rather to host links unrelated to Complainant’s business. It appears to the Panel that the <philipmorrisintl.us> domain name was chosen to capitalize on the association of the PHILLIP MORRIS mark with the domain name, and Respondent has created a likelihood of confusion and initial interest confusion by using a confusingly similar domain name, thus attracting Internet users to the <philipmorrisintl.us> domain name based on the PHILLIP MORRIS mark. The Panel may infer that Respondent commercially benefits from its display of links, and the promotion of the domain name for sale, and thus the Panel finds that Respondent made a bad faith attempt to attract Internet users to the disputed domain name for this purpose under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
As is clear from Respondent's filings in this case, she registered the <philipmorrisintl.us> domain name with full knowledge of Complainant’s rights in the PHILLIP MORRIS mark. This is clear given the fame of Complainant’s mark and Respondent's admissions. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorrisintl.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 29, 2014
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