Philip Morris USA Inc. v. LORI WAGNER
Claim Number: FA1503001608813
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia. Respondent is LORI WAGNER (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorrisexposure.com>, <philipmorrisexposure.org>, <philipmorrisexposure.info>, and <philipmorrisexposure.net>, registered with GoDaddy.com, LLC and Register.com, Inc..
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.
Hon. Nelson A. Diaz as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2015; the Forum received payment on March 10, 2015.
On March 10, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <philipmorrisexposure.com> and <philipmorrisexposure.org> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Register.com, Inc. has verified that Respondent is bound by the GoDaddy.com, LLC; Register.com, Inc. registration agreement 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 March 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <philipmorrisexposure.info> and <philipmorrisexposure.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Register.com, Inc. has verified that Respondent is bound by the GoDaddy.com, LLC; Register.com, Inc. registration agreement 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 March 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2015 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@philipmorrisexposure.com, postmaster@philipmorrisexposure.org, postmaster@philipmorrisexposure.info, postmaster@philipmorrisexposure.net. Also on March 17, 2015, 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 and determined to be complete on April 6, 2015.
Complainant submitted a timely Addition Submission, and it was received on April 10, 2015.
Respondent submitted a timely Additional Submission, and it was received on April 14, 2015.
On April 23,2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts common law rights in the PHILIP MORRIS marks. The mark is used on or in connection with the sale of tobacco products. The <philipmorrisexposure.com>, <philipmorrisexposure.org>, <philipmorrisexposure.info>, and <philipmorrisexposure.net> domain names are confusingly similar to the PHILIP MORRIS mark because they contain the entire mark and add the descriptive term “exposure” along with a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known as the disputed domain names, or in possession of licensing rights that would allow Respondent to use the PHILIP MORRIS mark in domain names. Further, the domain names use a famous mark to resolve to complaint websites or websites still under construction.
Respondent has engaged in bad faith use and registration. Respondent has engaged in a pattern of bad faith registrations. Respondent is also attempting to commercially benefit from a likelihood of confusion. The failure of Respondent to actively use one or more of the disputed domain names further shows bad faith. Additionally, the fame the PHILIP MORRIS has acquired makes it clear that Respondent registered the domain names with actual knowledge of Complainant’s rights.
B. Respondent
Respondent has rights or legitimate interests in the disputed domain names. Respondent does not commercially profit from its use of the disputed domain names, but rather exercises its First Amendment rights by using the domain names to host an anti-smoking website.
Respondent has not engaged in bad faith registration or use. Respondent has not attempted to sell the domain names, disrupt Complainant’s business, or create a likelihood of confusion in order to commercially profit. Rather, Respondent merely wishes to use the disputed domain names to host an anti-smoking website.
Respondent also respectfully requested that no supplemental filings be allowed by Complainant based on the potential misinformation that has already been provided by it.
C. Additional Submissions
Complainant reasserts its contentions made in the complaint, mainly that a respondent may not use confusingly similar domain name to exercise free speech rights. For the confusing similarity analysis under Policy ¶ 4(a)(i), Complainant argues that whether the disputed domain name resolves to a noncommercial site is irrelevant.
Respondent reasserts contentions made in its initial response, mainly that it has rights or legitimate interests since it is using the disputed domain names to host an anti-smoking website.
Respondent violated UDRP Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), Policy ¶ 4(b)(ii), Policy ¶ 4(b)(iv) Policy ¶ 4(c)(i) or (iii).
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 asserts unregistered common law rights in the PHILIP MORRIS mark. The mark is used on or in connection with the sale of tobacco products. The Panel notes that registration with a governmental entity or authority is not necessary to acquire rights in a trademark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant asserts that the PHILIP MORRIS mark is famous and has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Here, Complainant has provided evidence of sales under the mark (see Compl., at Attached Ex. C), as well as evidence of media recognition of the mark (see Compl., at Attached Ex. E). Also, Complainant notes prior UDRP proceedings in which panels have recognized the fame of the PHILIP MORRIS mark and Complainant’s corresponding rights. See Compl., at p. 5, ¶ 19. Thus, the Panel finds that Complainant has common law rights in the PHILIP MORRIS mark.
The disputed domain names are confusingly similar to Complainant’s mark. The domain names contain the entire PHILIP MORRIS mark and differ only by the addition of the generic term “exposure” and the gTLDs “.com,” “.net,” “.info,” and “.org.” As a general rule, the Panel may note that a gTLD cannot distinguish a domain name from the mark at issue. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (stating that “Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). The addition of generic or descriptive terms also fails to distinguish a domain name from the mark at issue. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Accordingly, the Panel may find that Respondent’s disputed domain names are confusingly similar to Complainant’s PHILIP MORRIS mark under Policy ¶ 4(a)(i).
The 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 makes a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names. 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 asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the PHILIP MORRIS mark in domain names. The Panel notes that “Lori Wagner” is listed as the registrant of record for the <philipmorrisexposure.com>, <philipmorrisexposure.org>, <philipmorrisexposure.info>, and <philipmorrisexposure.net> domain names. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights and that Respondent has actually admitted that it is not commonly known by the disputed domain names. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent fails to make an active use of the <philipmorrisexposure.net> domain name. The Panel notes that this domain name resolves to a webpage that is under construction. See Compl., at Attached Ex. F. The Panel finds that Respondent has failed to actively use this disputed domain name, it may take that as evidence that Respondent lacks rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also argues that Respondent’s use of the disputed domain names does not grant rights or legitimate interests. The <philipmorrisexposure.com> and <philipmorrisexposure.org> domain names resolve to an anti-smoking website under the <quitsmoking.com> domain name. The <philipmorrisexposure.info> domain name resolves to an anti-smoking website entitled <smokefree.gov>. While Complainant acknowledges that Respondent has free speech rights under the First Amendment, Complainant argues that Respondent may not exercise those rights by using a confusingly similar domain name to host an anti-smoking website. The Panel notes Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 (Mar. 25, 2014), a case that involved the same Respondent where the panel transferred seven domain names (all containing the PHILIP MORRIS mark) to Complainant and stated, “Respondents cannot masquerade as Complainant in order to exercise their right to free speech.” Thus, the Panel in this case finds that Respondent lacks rights or legitimate interests in the <philipmorrisexposure.com>, <philipmorrisexposure.info>, and <philipmorrisexposure.org> domain names under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. First, Complainant claims that Respondent has acted in bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. To support this claim, Complainant cites Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 (Mar. 25, 2014), a case involving the same Respondent where the panel transferred seven domain names containing the PHILIP MORRIS mark. The Panel finds that this consists of a pattern of bad faith registrations under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Second, Complainant argues that Respondent has acted in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this claim, Complainant argues that Internet users who view the resolving webpages are likely to believe they are sponsored by or affiliated with the Complainant, and that Respondent presumably profits from such use. The Panel notes that <philipmorrisexposure.com> and <philipmorrisexposure.org> domain names resolve to an anti-smoking website under the <quitsmoking.com> domain name, the <philipmorrisexposure.info> domain name resolves to an anti-smoking website entitled “smokefree.gov,” and the <philipmorrisexposure.net> domain name resolves to a webpage that is under construction. The Panel believes that a likelihood of confusion exists, and that Respondent presumably profits from the redirection of Internet users to its own websites, then it find that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Complainant also contends that in light of the fame and notoriety of its PHILIP MORRIS mark, as well as the previous case involving these two parties, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorrisexposure.com>, <philipmorrisexposure.org>, <philipmorrisexposure.info>, <philipmorrisexposure.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz, Panelist
Dated: May 7, 2015
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