Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV
Claim Number: FA1601001655503
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorris.site> and <philipmorrisgripe.site>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; <philipmorris.reviews> and <philipmorrisgripesite.reviews>, registered with Name.com, inc.; and <philipmorrisgripesite.com> registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 7, 2016; the Forum received payment on January 7, 2016.
On January 7, 2016, GoDaddy.com confirmed by e-mail to the Forum that the <philipmorrisgripesite.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 8, 2016, Name.com, inc. confirmed by e-mail to the Forum that the <philipmorrisgripesite.reviews> and <philipmorris.reviews> domain names are registered with Name.com, inc. and that Respondent is the current registrant of the names. Name.com, inc. has verified that Respondent is bound by the Name.com, inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the “Policy”.
On January 8, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <philipmorris.site> and<philipmorrisgripe.site> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the “Policy”.
On January 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2016 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.site, postmaster@philipmorrisgripesite.com, postmaster@philipmorrisgripe.site, postmaster@philipmorrisgripesite.reviews, and postmaster@philipmorris.reviews. Also on January 11, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant, Philip Morris USA Inc., has common law rights in the PHILIP MORRIS mark. Respondent’s <philipmorris.site> and <philipmorris.reviews> are identical to the PHILIP MORRIS mark because they contain the mark, less the space, combined with the top-level domain (“TLD”) suffixes “.site” and “.reviews.” Respondent’s <philipmorrisgripesite.com>, <philipmorrisgripe.site>, and <philipmorrisgripesite.reviews> domain names are confusingly similar to the PHILIP MORRIS mark because they contain the mark, less the space, along with the words “gripe” and “site,” combined with the TLDs “.site” and “.reviews.” or the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the domain names because Respondent has not been given permission to use the mark and because there is no evidence to indicate Respondent is known by the domain names. Respondent fails to use the <philipmorrisgripesite.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it contains information that is critical of Complainant. In addition, Respondent fails to use the <philipmorris.site>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because they resolve to inactive websites.
Policy ¶ 4(a)(iii)
Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Lori Wagner has previously been known as David Delman, and that David@Delman.TV is merely a pseudonym for the name David Delman. Complainant also contends that the mailing address and telephone number provided for all Respondents is identical. The Panel finds that the disputed domain names are “subject to common control by a single Respondent who is using multiple aliases.” See Philip Morris USA Inc. v. Lori Wagner / David Delman / David@Delman.TV, FA 1627979 (Forum Aug. 19, 2015).
Complainant has common law rights in the PHILIP MORRIS mark. Respondent’s <philipmorris.site> and <philipmorris.reviews> are identical to the PHILIP MORRIS mark. Respondent’s <philipmorrisgripesite.com>, <philipmorrisgripe.site>, and <philipmorrisgripesite.reviews> domain names are confusingly similar to the PHILIP MORRIS mark.
Respondent registered the disputed domain names on the following dates:
<philipmorrisgripesite.com> July 18, 2015;
<philipmorrisgripesite.reviews> August 6, 2015;
<philipmorris.reviews> August 6, 2015;
<philipmorrisgripe.site> August 9, 2015; and
<philipmorris.site> August 17, 2015.
Respondent uses the <philipmorrisgripesite.com> domain name to resolve to a criticism website. Respondent’s <philipmorris.site>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names resolve to inactive websites. Respondent has no rights or legitimate interests in respect of the domain names.
Respondent has registered 39 domain names incorporating “Philip Morris.” Complainant has prevailed against Respondent in eight previous proceedings. The disputed domain names have been registered and are being used in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has common law rights in the PHILIP MORRIS mark, dating back for longer than a century. See Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (Forum August 4, 2014) (“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.”); Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Forum Jan. 29, 2014) (holding that Philip Morris USA had common law rights in “Philip Morris”); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (Forum August 4, 2014) (“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.”); Philip Morris USA Inc. v. Lori Wagner / David Delman / David@Delman.TV, FA 1627979 (Forum Aug. 19, 2015) (“Complainant has demonstrated its common law rights in the PHILIP MORRIS mark under Policy ¶ 4(a)(i).”).
Respondent’s <philipmorris.site> and <philipmorris.reviews> domain names are identical to the PHILIP MORRIS mark under Policy ¶ 4(a)(i) because they contain the mark, less the space, combined with the TLDs “.site” and “.reviews.” Respondent’s <philipmorrisgripesite.com>, <philipmorrisgripe.site>, and philipmorrisgripesite.reviews> domain names are confusingly similar to the PHILIP MORRIS mark because they contain the mark, less the space, along with the words “gripe” and “site,” combined with the TLDs “.site” and “.reviews.” or the gTLD “.com.”
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 (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).
Respondent is not commonly known by the <philipmorris.site>, <philipmorrisgripesite.com>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the PHILIP MORRIS mark. The WHOIS information lists “LORI WAGNER” and “DAVID DELMAN” as Registrant for the domain names. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent fails to use the <philipmorrisgripesite.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The resolving website contains information that is critical of Complainant. Although Respondent may have the right to criticize Complainant, Respondent does not have the right to misappropriate Complainant’s trademark in a domain name to divert Complainant’s customers to Respondent’s criticism site. See Jonah Hunt v. Robert Racansky, FA 1471550 (Forum Dec. 31, 2012) (“[W]hile Respondent may have rights and legitimate interests in maintaining . . . a complaint website . . . Respondent is not making a legitimate use of a domain name when it uses Complainant’s own trademark in the domain name to divert complainant’s customers to the gripe site.”); see also Diners Club International, Limited v. Infotechnics Ltd., FA 169085 (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”). Therefore, Respondent lacks legitimate rights and interests in the <philipmorrisgripesite.com> domain name under Policy ¶ 4(a)(ii).
Respondent fails to use the <philipmorris.site>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), because they resolve to inactive websites. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent has registered 39 domain names incorporating “Philip Morris.” Complainant has prevailed against Respondent in eight previous proceedings. See Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (Forum Jan. 29, 2014); Philip Morris USA Inc. v. David Delman and Lori Wagner, D2013-2182 (WIPO March 25, 2014); Philip Morris USA Inc. v. David Delman / DAVID@DELMAN.TV, FA 1555881 (Forum May 22, 2014); Philip Morris USA Inc. v. DavidDelman / DAVID@DELMAN.TV, FA 1555882 (Forum June 3, 2014); Philip Morris USA Inc. v.DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (Forum Aug. 4, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (Forum Aug. 4, 2014); Philip Morris USA Inc. v. Lori Wagner, FA 1608813 (Forum May 7, 2015); Philip Morris USA Inc. v. Lori Wagner / David Delman / David@Delman.TV, FA 1627979 (Forum Aug.19, 2015). Therefore, Respondent has demonstrated a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii) because it did so with actual knowledge of Complainant’s rights in the PHILIP MORRIS mark. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Respondent uses the <philipmorrisgripesite.com> domain name in bad faith under Policy ¶ 4(a)(iii) because the domain name incorporates Complainant’s trademark to resolve to a website containing information critical of Complainant. While Respondent is free to criticize Complainant on its website, Respondent cannot use Complainant’s trademark in a domain name directing Internet users to its criticism website. See Philip Morris USA Inc. v. Lori Wagner / David Delman / David@Delman.TV, FA 1627979 (Forum Aug. 19, 2015) (“Respondent’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 Diners Club International, Limited. v. Infotechnics Ltd., FA 169085 (Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”)
Respondent uses the <philipmorris.site>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names in bad faith because they each resolve to inactive websites. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant 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.site>, <philipmorrisgripesite.com>, <philipmorrisgripe.site>, <philipmorrisgripesite.reviews>, and <philipmorris.reviews> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 13, 2016
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