Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV
Claim Number: FA1406001567138
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is DAVID DELMAN / DAVID@DELMAN.TV (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org>, registered with Godaddy.Com, Llc, and Domain.Com, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2014; the National Arbitration Forum received payment on June 27, 2014.
On June 27, 2014, Godaddy.Com, Llc and Domain.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names are registered with Godaddy.Com, Llc, Domain.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc, Domain.Com, Llc has verified that Respondent is bound by the respective registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@philipmorris-unethical.com, postmaster@philipmorris-violations.com, postmaster@philipmorrisviolations.co, postmaster@philipmorrisviolations.com, postmaster@philipmorrisviolations.info, postmaster@philipmorrisviolations.org. Also on June 30, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received on July 21, 2014. However, the Response was deemed deficient pursuant to Supplemental Rule 5(a).
Complainant submitted a timely Additional Submission on July 28, 2014.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names are confusingly similar to Complainant’s PHILIP MORRIS mark.
2. Respondent does not have any rights or legitimate interests in the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names.
3. Respondent registered and uses the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names in bad faith.
B. Respondent submitted a deficient Response in this proceeding, and therefore it will not be considered.
C. Complainant’s Additional Submission provides arguments against the notion that Respondent is making a fair use of the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names.
Complainant has used “Philip Morris” continuously throughout the United States for over a century and has established common law rights in the mark PHILIP MORRIS. Complainant conducts business under several domain names incorporating its PHILIP MORRIS mark including <philipmorris.com>, <philipmorris.net>, <philipmorris.org>, and <philipmorris.info>.
Respondent uses the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names to resolve to third-party websites.
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 and is being used in bad faith.
Complainant argues that there is widespread recognition of Philip Morris USA in the media, which closely associates the company with the tobacco products that it manufactures and sells. The Panel notes the following media articles: Richmond Awaits a Bold Antipoverty Plan,”N.Y. Times, Oct.15, 2013, describing “Philip Morris USA” as “the nation’s largest tobacco company.”; see also No More Delay in Tobacco Decision, L.A. Times ,Jan. 27, 2012, describing “Philip Morris USA, maker of top-selling Marlboro cigarettes” as one of “the largest U.S. cigarette makers”; see also Marlboro Goes Smokeless, Chi. Trib.June 12, 2007, “For decades, the nation’s largest cigarette maker, Philip Morris USA, has cranked out tens of billions of cigarettes annually,
including its Marlboro brand.” Complainant also provides evidence of its widespread use of the PHILIP MORRIS mark in domain names that resolve to websites that contain information about the history of Complainant, Complainant’s products, and about how to quit smoking. The Panel finds that Complainant has established common law rights in its PHILIP MORRIS mark, a long-standing and well-known mark in the tobacco industry. Previous panels have likewise recognized Complainant’s rights in the PHILIP MORRIS mark. See Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Dec. 30, 2013) (where Complainant’s use of PHILIP MORRIS was continuous and ongoing, finding that “[t]hrough widespread, extensive use in connection with its products, thePHILIP MORRIS mark is well-known and famous” and Complainant “has rights in the PHILIP MORRIS mark,” and transferring “philipmorrisintl.us” to Complainant); see also Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1555882 (Nat. Arb. Forum June 3, 2014) (“Complainant has used the PHILIP MORRIS mark for over a century, and the mark is widely recognized as referring to Complainant and its tobacco products”).
Respondent’s <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names simply add the descriptive terms “violations” or “unethical,” in some cases with a hyphen, to Complainant’s PHILIP MORRIS mark, which does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., Case No. D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Respondent has also added the generic top-level domains (“gTLDs”) “.co,” “.org,” “.info,” or “.com” to the disputed domain names, inconsequential to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
It is immaterial to the Policy ¶ 4(a)(i) analysis that the disputed domain names resolve to websites critical of smoking or of Complainant. See Jack Russell Terrier Club of Am. Inc. v. Liz McKinney, FA 0144591 (Nat. Arb. Forum Mar. 26, 2003) where the panel found that the respondent’s use of the disputed domain name incorporating complainant’s mark was confusingly similar when an Internet user would expect to find complainant and not respondent and would be confused as to the source and sponsorship of the documents and opinions accessed at the respondent’s criticism site.
Thus, the Panel finds that Respondent’s <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names are confusingly similar to Complainant’s PHILIP MORRIS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent is not known by the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names, and has Complainant not authorized Respondent to use PHILIP MORRIS in domain names. The WHOIS information lists “DAVID DELMAN / DAVID@DELMAN.TV” as the registrant of record for the disputed domain names. In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), the panel did not find for the respondent under Policy ¶ 4(c)(ii) when no evidence in the record tied the respondent’s name with the domain name. The Panel similarly finds that there is no basis for determining Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent currently uses the disputed domain names to resolve to third-party anti-smoking websites, which does not establish Respondent’s rights or legitimate interests in the domain names. Complainant cites previous UDRP determinations against Respondent for similar uses of its PHILIP MORRIS mark. See, e.g., Philip Morris USA Inc. v. David Delman & Lori Wagner, Case No. D2013-2182 (WIPO March 25, 214) (involving the same Respondent, David Delman, transferring seven “philipmorris” domain names to complainant, and holding “Respondents cannot masquerade as Complainant in order to exercise their right to free speech. Respondents concede that Complainant owns and has exclusive rights to use the trade name ‘Philip Morris’ and that Complainant has used the mark for over a century and a half; and as a result, the trademark is distinctive to the products it sells and not related to Respondents’ intentions or interest in the mark.”). The Panel finds that Complainant has the right to control the use of its own mark and, though Respondent has the right to criticize Complainant, it may not do so using Complainant’s mark. See Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA1555882 (Nat. Arb. Forum June 3, 2014) (ordering transfer of philipmorrisusa.info domain name, which pointed to the tobaccofree.org website); see also Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA1555881 (Nat. Arb. Forum May 22, 2014) (ordering transfer of philipmorrisusa.us domain name, which pointed to the tobaccofree.org website); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 0169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website,” transferring domain name <diners-club.net> which incorporated complainant’s DINERS CLUB mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence that Respondent has registered nineteen domain names incorporating “Philip Morris,” and cites several previous UDRP determinations against Respondent. See, e.g., Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1555882 (Nat. Arb. Forum June 3, 2014) (concluding “Respondent’s [Delman’s] willful behavior has created a pattern of bad faith domain name registration”). The Panel finds that Respondent has engaged in a pattern of bad faith registration incorporating Complainant’s mark. See Enterprise Rent-a-Car Co. v. Domain Park Ltd., FA 1108660 (Nat. Arb. Forum Dec. 27, 2007) (“registration of multiple domain names using the Complainant’s marks . . . is evidence of bad faith”); see also Getty Images (US) Inc. v. Foo, FA 1535953 (Nat. Arb. Forum Feb. 24, 2014) (“the Panel considers Respondent’s history of adverse UDRP proceedings as establishing a pattern of bad faith [sufficient to] infer [that Respondent registered [the disputed names] in bad faith”).
Complainant asserts Respondent registered the disputed domain names with full
knowledge of Complainant’s rights in the PHILIP MORRIS mark and argues that, prior to registering the disputed domain names, Respondent had been the subject of four separate proceedings involving Respondent’s registration of 10 “philipmorris” domain names where the panels transferred the domain names to Complainant. The Panel agrees that it is indisputable that Respondent registered the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names with actual knowledge of Complainant’s rights, which is clear evidence of bad faith. See, e.g., Minicards Vennootschap v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under the Policy after concluding that respondent had “actual knowledge of Complainant’s mark when [respondent] registered the disputed domain name”).
Respondent has registered and is using the disputed domain names to divert Internet users seeking Complainant to third-party websites for Respondent’s benefit, and to disrupt Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii). See Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014) (transferring domain name when inclusion of the exact Philip Morris name created “initial interest confusion”); see also Hunter Fan Co. v. MSS, FA 0098067 (Nat. Arb. Forum Aug. 23, 2001) (“use of [a] domain name comprised of Complainant’s mark in a manner likely to cause initial interest confusion demonstrates bad faith.”).
The Panel finds, as other panels have, that it is immaterial that the disputed domain names currently point to anti-smoking websites or that they are non-commercial in nature; Respondent’s use of Complainant’s PHILIP MORRIS mark in domain names is nonetheless in bad faith. See Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1555882 (“Respondent’s [Delman’s] bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights.”); see also USAEyes v. Brent Hanson, FA 1118174 (Nat. Arb. Forum Feb. 7, 2008) (“although the Respondent’s complaint website did not . . . earn commercial gain, the Respondent’s use of the Complainant’s mark with a view to cause damage and disruption to the Complainant cannot be right. Still less, where the use of the domain name will trick Internet users intending to visit the trademark site but, instead, visit the Respondent site.”); see also Air France v. Kitchkulture, Case No. D2002-0158 (WIPO May 9, 2002) (“commercial gain is just one of the possible incentives to create a likelihood of confusion with such a mark as the complainant's”) (transferring infringing domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorris-unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 4, 2014
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