Philip Morris USA Inc. v. Deborah Gowrie
Claim Number: FA1606001677730
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, United States. Respondent is Deborah Gowrie (“Respondent”), Connecticut, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> registered with GoDaddy.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.
On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@marlboromarijuana.co, postmaster@marlboromarijuana.guru, postmaster@parliamentpot.com, postmaster@philipmorrisusa.guru. Also on June 6, 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 July 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant uses the MARLBORO and PARLIAMENT marks in connection with the manufacturing, marketing, and selling of cigarettes. Complainant has registered the MARLBORO mark (Reg. No. 68,502, registered Apr. 14, 1908) and the PARLIAMENT mark (Reg. No. 378,340, registered June 4, 1940) with the United States Patent and Trademark Office (“USPTO”), which establishes rights in the mark. See Complaint, at Attached annexes E and G, respectively. Further, Complainant has common law rights in the PHILIP MORRIS mark. Respondent’s <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names are confusingly similar to Complainant’s MARLBORO, PARLIAMENT, and PHILIP MORRIS marks. All of the disputed domain names contain one of Complainant’s marks in its entirety, while adding a generic or geographic term, along with adding the generic top-level domain (“gTLD”) “.com” or “.guru,” or the country-code top-level domain (“ccTLD”) “.co.”
2. Respondent has no rights or legitimate interests in the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names. Respondent is not commonly known by the disputed domain names. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names. Rather, three of the domain names: <marlboromarijuana.co>, <marlboromarijuana.guru>, and <philipmorrisusa.guru>, resolve to inactive websites; while the fourth, <parliamentpot.com>, resolves to a directory of hyperlinks. See Compl., at Attached Annex C.
3. Respondent is using the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names in bad faith. While multiple infringing domains have been registered in the instant dispute, a pattern of bad faith registrations has been evidenced per Policy ¶ 4(b)(ii). Respondent has attempted to attract Internet users to its <parliamentpot.com> site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website, by including pay-per-click hyperlinks to unrelated websites. See Compl., at Attached Annex C (Links include: “9 Well Paid Writing Jobs,” “Buy One Domain Get 1 Free,” “6 Stocks to Hold Forever,” and “Remove Malware-Free”). Respondent is also inactively holding the <marlboromarijuana.co>, <marlboromarijuana.guru>, and <philipmorrisusa.guru> domain names. Id. Lastly, Respondent registered the disputed domains with actual or constructive knowledge of Complainant’s marks, which indicates bad faith under a nonexclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, and <philipmorrisusa.guru> domain names are confusingly similar to Complainant’s MARLBORO and PARLIAMENT marks.
2. Respondent does not have any rights or legitimate interests in the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names.
3. Respondent registered or used the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names 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 uses the MARLBORO and PARLIAMENT marks in connection with the manufacturing, marketing, and selling of cigarettes. Complainant purports it has registered the MARLBORO mark (Reg. No. 68,502, registered Apr. 14, 1908) and the PARLIAMENT mark (Reg. No. 378,340, registered June 4, 1940) with the USPTO, and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the MARLBORO and PARLIAMENT marks. See Compl., at Attached Annexes E, G. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in the mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the MARLBORO and PARLIAMENT marks.
Further, Complainant uses the PHILIP MORRIS mark in connection with its company and tobacco products. Complainant argues common law rights in the PHILIP MORRIS mark, which is permitted under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant argues that because the PHILIP MORRIS mark has been continuously used by Complainant in connection with its company and tobacco products for over a century, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). Additionally, Complainant asserts that it has registered several domain names that contain the PHILIP MORRIS mark including: philipmorris.com; philipmorris.net; philipmorris.org; and philipmorris.info. See Compl., at Attached Annex H. Further, Complainant provides evidence of numerous articles establishing PHILIP MORRIS in connection with Complainant. See Compl., at Attached Annex J. Past panels have found that continuous use of a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Accordingly, the Panel agrees with Complainant and finds that Complainant has demonstrated common law rights in the PHILIP MORRIS mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names are confusingly similar to Complainant’s MARLBORO, PARLIAMENT, and PHILIP MORRIS marks. Complainant argues that all of the disputed domain names contain one of Complainant’s marks in its entirety, while adding a generic or geographic term, along with adding a gTLD or a ccTLD. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that precedent supports a finding of confusing similarity here under Policy ¶ 4(a)(i), as the disputed domains incorporate Complainant’s marks, with the addition of either the generic term “marijuana” or “pot,” or the geographic term “usa,” and either the gTLD “.guru” or “.com,” or the ccTLD “.co.”
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); see also AOL LLC v. Gerberg, FA 780200 (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 has no rights or legitimate interests in the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain names, nor is Respondent connected or affiliated with Complainant. The WHOIS information regarding the disputed domain names identifies “Deborah Gowrie” as the registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain names per Policy ¶4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names. Rather, Complainant contends that three of the domain names: <marlboromarijuana.co>, <marlboromarijuana.guru>, and <philipmorrisusa.guru> resolve to an under construction website that states “Website Coming Soon! Please check back soon to see if the site is available.” See Compl., at Attached Annex C. The <parliamentpot.com> domain name resolves to a directory site that contains pay-per-click links showing advertisements. Id. Panels have found such use (or lack thereof) by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, this Panel agrees that Respondent’s <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
First, Complainant asserts that multiple infringing domains have been registered in the instant dispute, and thus a pattern of bad faith registrations has been evidenced per Policy ¶ 4(b)(ii). Panels have found bad faith registration where a respondent registered several domains incorporating a complainant’s mark(s). See TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc., D2012-2533 (WIPO June 9, 2013) (ordering transfer of five infringing domain names, stating, “The consensus view states that a pattern of [bad faith] conduct can involve . . . a single case involving the registration of multiple domain names similar to a trademark”). Accordingly, while Respondent has registered four domains similar to Complainant’s marks, the Panel agrees that a pattern has been established as outlined in Policy ¶ 4(b)(ii).
Complainant contends that Respondent has attempted to attract Internet users to its <parliamentpot.com> domain name for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. See Compl., at Attached Annex C (Links include: “9 Well Paid Writing Jobs,” “Buy One Domain Get 1 Free,” “6 Stocks to Hold Forever,” and “Remove Malware-Free”). The Panel finds that Internet user confusion subsequently results from these unrelated hyperlinks, that Respondent is receiving click-through fees, and therefore Respondent’s behavior constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Complainant contends that Respondent’s failure to make any active use of the <marlboromarijuana.co>, <marlboromarijuana.guru>, and <philipmorrisusa.guru> domain names is further evidence of bad faith. See Compl., at Attached Annex C. Panels have found that inactive use of a disputed domain name may constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Therefore, this Panel finds that Complainant’s inactive use of the <marlboromarijuana.co>, <marlboromarijuana.guru>, and <philipmorrisusa.guru> domain names constitute bad faith registration and use under Policy ¶ 4(a)(iii).
Lastly, Complainant contends that in light of the fame and notoriety of Complainant's MARLBORO, PARLIAMENT, and PHILIP MORRIS marks, it is inconceivable that Respondent could have registered the <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, and <philipmorrisusa.guru> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here 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 marks prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 <marlboromarijuana.co>, <marlboromarijuana.guru>, <parliamentpot.com>, <philipmorrisusa.guru> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 15, 2016
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