Philip Morris USA, Inc. v. DAVID DELMAN / DAVID DELMAN
Claim Number: FA1409001579437
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 (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philipmorrisexposed.us>, registered with Name.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 16, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <philipmorrisexposed.us> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@philipmorrisexposed.us. Also on September 17, 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 and determined to be complete on October 7, 2014.
On October 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
On October 13, 2014, Complainant filed an Additional Submission which was received in a timely manner according to the Forum’s Supplemental Rule #7.
On October 20, 2014, Respondent filed an Additional Submission which was received in a timely manner according to the Forum’s Supplemental Rule #7.
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’s Contentions:
1. Policy ¶ 4(a)(i). Complainant has exclusive common law rights in the PHILIP MORRIS mark. Complainant has used the mark continuously in the United States for over a century. Complainant has garnered widespread recognition of the mark in the media, and with the public at large. Complainant uses the PHILIP MORRIS mark in connection with its tobacco products. The <philipmorrisexposed.us> domain name is confusingly similar to the PHILIP MORRIS mark.
2. Policy ¶ 4(a)(ii). Respondent has no legitimate interests or rights in the <philipmorrisexposed.us> domain name. Respondent has no trademark claim. Respondent was never known by any name or trade name reflecting the PHILIP MORRIS mark, or disputed domain name. Further, Complainant has not authorized Respondent’s use of the name. Respondent’s use of the <philipmorrisexposed.us> domain name in furtherance of a gripe site does not amount to a bona fide offering of goods or services, or a legitimate noncommercial use. Respondent may have the right to develop a website critical of Complainant’s products, but he may not co-opt Complainant’s proprietary rights for use in the domain name.
3. Policy ¶ 4(a)(iii). Respondent has engaged in bad faith. Respondent has registered twenty-four domain names incorporating the PHILIP MORRIS mark, which evinces a pattern of bad faith. Respondent’s registration and use of the disputed domain name creates a form of initial interest confusion, attracting users to the domain name. Respondent had actual knowledge of Complainant’s rights in the PHILIP MORRIS mark at the time of registration. Respondent’s use of the domain name with an anti-smoking website does not insulate Respondent from a finding of bad faith.
B. Respondent’s Contentions:
1. The prior cases cited by Complainant involving Respondent should not be controlling, or even persuasive. The causes of actions are not similar because the domain name is not the same, nor is the resolving content, which is now critical in nature. Further, the prior decisions were made without the aid of a timely response from Respondent.
2. The disputed domain name resolves to a non-profit anti-smoking website. No revenue is generated by the linked pages. There is nothing to confuse the Internet user between an individual that wants to smoke and an individual that wants to quit smoking. Accordingly, Respondent has made a legitimate use of the name and not engaged in bad faith.
C. Complainant’s Reply
1. There is a difference between registering a domain name that misappropriates another’s rights and posting content critical of another on a website.
2. Maintaining a gripe site does not justify use of an infringing domain name.
3. It is immaterial to the confusion analysis whether the Infringing Domain Name resolves to a website critical of the complaint.
4. The inclusion of a derogatory term in “philipmorrisexposed.com” does not dispel confusion.
5. Panels interpreting the Policy have held that a non-commercial use may constitute bad faith registration and use.
6. Respondent is engaging in a pattern of harassing PM USA by continually registering “philipmorris” domain names with actual knowledge of Complainant’s rights, which is “clear evidence of bad faith”.
D. Respondent’s Additional Submission
1. Respondent furnished copies of NAF precedent, pleadings in another of Respondent’s cases; and a blog article deemed to be relevant.
1. Respondent’s <phillipmorrisexposed.us> domain name is confusingly similar to Complainant’s PHILIP MORRIS mark.
2. Respondent does not have any rights or legitimate interests in the <phillipmorrisexposed.us> domain name.
3. Respondent registered or used the <phillipmorrisexposed.us> domain name 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.
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 its decision.
Prior panels have held that a trademark registration is not required by Policy ¶ 4(a)(i), so long as the complainant can show the mark has gained secondary meaning in the eyes of the consuming public. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark.).
In determining the existence of common law rights, previous panels have considered evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“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.”). In demonstrating secondary meaning, Complainant asserts that it has used the mark continuously in the United States for over a century in connection with its tobacco products. Further, Complainant claims the mark has garnered widespread recognition mark in the media and with the public at large. See Compl., at Attached Ex. D. Complainant further cites to Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014), where a previous UDRP panel determined that Complainant had common law rights in its PHILIP MORRIS mark. The Panel agrees that Complainant has provided sufficient evidence showing the PHILIP MORRIS mark has acquired secondary meaning, and finds Complainant has established rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant claims the <philipmorrisexposed.us> domain name is confusingly similar to the PHILIP MORRIS mark. Complainant argues that neither the addition the “.us” country-code top-level domain (“ccTLD”), nor the removal of spacing from the two-word mark are relevant to the Policy ¶ 4(a)(i) confusing similarity analysis. Instead, Complainant argues the only relevant addition is the generic term “exposed.” Complainant asserts that the insertion of this critical term does nothing to alleviate confusion. Prior panels have agreed that the inclusion of a ccTLD and omission of spacing are irrelevant alterations as spaces are impermissible in domain names and a TLD is a required element. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a TLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Further, past panels have concluded that the addition of a generic word is insufficient to distinguish the resulting name from the incorporated mark. In BRIO Corp. v. Spruce Caboose a/k/a Brio is Overpriced and Arrogant Fascists, FA 114419 (Nat. Arb. Forum August 5, 2002), the panel determined, “The words ‘sucks’ and ‘exposed’ in the domain name[s] fail to detract from the dominating presence of Complainant’s BRIO mark.” Accordingly, the Panel agrees that such alterations are insufficient to distinguish the <philipmorrisexposed.us> domain name from PHILIP MORRIS mark, and therefore find the name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant claims Respondent lacks any rights in the mark, and has never sought or obtained any trademark registrations for “Philip Morris” or any variation. In light of the available evidence, the Panel agrees that Complainant has satisfied Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Additionally, Complainant argues Respondent was never known by any name or trade name reflecting the PHILIP MORRIS mark, or the disputed domain name. Further, Complainant has not authorized Respondent’s use of the name. As Respondent has not countered this contention in its response, the Panel concludes Respondent is not commonly known by the <philipmorrisexposed.us> name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s use of the <philipmorrisexposed.us> domain name in furtherance of a gripe site does not amount to a bona fide offering of goods or services, or a legitimate noncommercial use. Complainant posits that Respondent may have the right to develop a website critical of Complainant’s products, but he may not co-opt Complainant’s proprietary rights for use in this domain name. Complainant has included a screenshot of the allegedly infringing gripe site at Complainant’s Exhibit E. Previous panels have generally held that critical speech is protected when used in connection with a non-infringing domain name, but that such protection does not rise to the realm of domain names. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Accordingly, the Panel concludes that Respondent’s use of the <philipmorrisexposed.us> domain name in connection with an anti-smoking site does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) and (iv), respectively.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s registration of twenty-four domain names incorporating the PHILIP MORRIS mark. Complainant notes it has been actively policing such activity and has been successful in obtaining UDRP transfers against Respondent. See Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (Nat. Arb. Forum Jan. 29, 2014); Philip Morris USA Inc. v. David Delman/Lori Wagner, WIPO Case No. D2013-2182 (March 25, 2014); Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA 1555881 (Nat. Arb. Forum May 22, 2014); Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA 1555882 (Nat. Arb. Forum June 3, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (Nat. Arb. Forum August 4, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (Nat. Arb. Forum August 4, 2014). The Panel agrees that Respondent has engaged in a methodical pattern of targeting Complainant’s PHILIP MORRIS mark, and therefore find evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant argues that Respondent’s registration of the disputed domain name to redirect users to an anti-smoking website does not insulate Respondent from a finding of bad faith. In Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003), the panel wrote, “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.” Consistent with such precedent, the Panel finds Respondent’s reliance on an infringing domain name to promote anti-smoking content does not shelter Respondent from Policy ¶ 4(a)(iii) bad faith.
Respondent’s registration and use of the disputed domain name creates a form of initial interest confusion, attracting users to the domain name. In so arguing, Complainant cites to Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001), where the panel wrote, “use of [a] domain name comprised of Complainant’s mark in a manner likely to cause initial interest confusing demonstrates bad faith.” The Panel is persuaded on this point, and it finds additional evidence of bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the PHILIP MORRIS mark at the time of registration. In support, Complainant notes Respondent’s continued efforts against Complainant and its business objectives. The Panel agrees that the present circumstances indicate that Respondent did in fact have actual knowledge of Complainant’s PHILIP MORRIS mark at the time the <philipmorrisexposed.us> domain name was registered, and therefore find bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorrisexposed.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 27, 2014
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