Philip Morris USA Inc. v. ZhangXin
Claim Number: FA1704001729096
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter Kaye Scholer LLP, District of Columbia, USA. Respondent is ZhangXin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorris.space>, <philip-morris.online>, and <philipmorrisinternational.online>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017. The Complaint was received in both English and Chinese.
On May 9, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <philipmorris.space>, <philip-morris.online>, and <philipmorrisinternational.online> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 May 12, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 1, 2017 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.space, postmaster@philip-morris.online, postmaster@philipmorrisinternational.online. Also on May 12, 2017, the Chinese language 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 June 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in PHILIP MORRIS and alleges that the disputed domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent did not submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells tobacco products under various brand names[i];
2. the disputed domain names were registered on November 25, 2016;
3. the disputed domain names are not in use and there is no evidence of their past use; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant has not sought to prove trademark rights through registration and there is no evidence in the Complaint of any trademark registration for PHILIP MORRIS.
Instead, Complainant asserts common law rights. The evidence in support thereof compromises (i) prior UDRP decisions in which Complainant has been involved where a panel recognized reputation of the PHILIP MORRIS name, and (ii) media articles.
Complainant appears to have taken an unnecessary and potentially perilous path to the proof of trademark rights. Decisions under the UDRP are not required to adhere to strict principles of precedent. Conformity of decision making is understood by panelists, but there is nothing requiring a panelist to follow the findings in an earlier decision where that panelist has no evidence of the claim itself.
Further, the media articles annexed to the Complaint are poorly curated. The article principally relied upon, from the Chicago Tribune, entitled “Marlboro Goes Smokeless”, shows, if anything, that the MARLBORO trademark is well known[ii].
Nevertheless, in view of the indisputable length of time over which the PHILIP MORRIS name has been before the public and in the absence of any contest to trademark right by Respondent, the Panel finds that Complainant has shown trademark rights in that name.
Panel is satisfied that the disputed domain names are either legally identical[iii] or confusingly similar to Complainant’s trademark.[iv] The disputed domain names take the trademark and add non-distinctive elements – namely, the gTLDs “.space” or “.online”, hyphenation or a generic term. Those additions do not distinguish the domain names from the trademark in any significant way so as to avoid confusion.[v]
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vi]
The publicly available WHOIS information identifies Respondent as “ZhangXin” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
The domain names have not been used and so there is no evidence of a bona fide offering of goods or services.[vii]
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a response that onus is not met and the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and were used in bad faith.
Here, the disputed domain names are not in use and there is no evidence that any of them have been used previously. Nonetheless, further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent has demonstrated a pattern of bad faith registration and use pursuant to paragraph 4(b)(ii) above through its registration of multiple domains containing Complainant’s trademark, coupled with evidence in other recent UDRP proceedings of Respondent’s registration of multiple domain names containing the name of Complainant’s parent company, Altria Group, Inc.[viii] Those proceedings involved the domain names <altria.space> and <altria.tech> and the panelist concluded that:
“Respondent exhibits a pattern of bad faith domain name registration by registering multiple domain names that are identical to Complainant’s ALTRIA trademark. Respondent registered its two at-issue identical domain names two days apart using different generic top levels. Respondent’s registration of multiple domain names that are identical to Complainant’s trademark suggests a pattern of bad faith registration per Policy ¶ 4(b)(ii). SeeMicrosoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).”
The Panel concludes, a fortiori, that the same reasoning applies to these proceedings. Here, three disputed domain names are at issue and two TLDs have been used to register what is essentially Complainant’s trademark. Subject to what has been said earlier regarding the precedent value of other UDRP decisions, the Panel has also paid regard to the abuse of the name of Complainant’s parent company within a contemporaneous timeframe. The Panel finds that Respondent has engaged in an abusive pattern of conduct as circumscribed by paragraph 4(b)(ii) and has registered and used the domain names in bad faith.
Panel finds that Complainant has satisfied the third and final element of the Policy.
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.space>, <philip-morris.online>, and <philipmorrisinternational.online> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 11, 2017
[i] Philip Morris USA brands include Marlboro, Virginia Slims, Benson & Hedges, Merit, Parliament, Alpine, Basic, Cambridge, Bucks, Dave's, Chesterfield, Collector's Choice, Commander, Lark, L&M, Players, Greensmoke, and MarkTen.
[ii] Further, having regard to the brands listed in fn. 1 above by which Complainant’s tobacco products are marketed and sold, there is no clear evidence before this Panel that the name PHILIP MORRIS acts as a trademark itself.
[iii] See, for example, Kellogg North America Company v. Lakhvinder Singh, FA 1686534 (Forum Sept. 20, 2013) (“.global is a generic top level domain and does not distinguish [<kelloggs.global> and <kellogg.global>] from the Complainant’s KELLOGG’s mark.”
[iv] In particular, the Panel finds <philipmorris.space> and <philip-morris.online> identical to the trademark and <philipmorrisinternational.online> confusingly similar to the trademark.
[v] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also and by analogy, Doosan Corporation v. philippe champain, FA 1636675 (FORUM Oct. 13, 2015) finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity; see finally, 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 does not generally create a new distinctive term and, again, by analogy, the introduction of hyphenation often goes to only highlight the trademark when it appears in a composite term.
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Thermo Electron Corp. v. Xu, FA 713851 (FORUM July 12, 2006) finding that the respondent’s non-use of the disputed domain names demonstrated that the respondent was 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).
[viii] See Altria Group, Inc. and Altria Group Distribution Company v. ZhangXin, FA 1729134 (FORUM June 4, 2017) holding that <altria.tech> and <altria.space> were registered and used in bad faith.
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