Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV
Claim Number: FA1404001555881
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.TV (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philipmorrisusa.us>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2014; the National Arbitration Forum received a hard copy on April 25, 2014.
On April 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the domain name is 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 29, 2014, the Forum served Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on May 19, 2014.
A timely Additional Submission was received and found deficient on May 28, 2014, because it was received after the deadline for submissions.
On May 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 makes the following assertions:
1. Respondent’s <phillipmorrisusa.us> domain name, the domain name at issue, is confusingly similar to Complainant’s PHILLIP MORRIS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent submitted a Response which admitted Complainant’s rights in the PHILLIP MORRIS mark but alleges that the domain is not being used for any commercial purpose. Rather Respondent asserts that the sight is being used in the exercise of free speech as a part of an anti-smoking campaign.
Complainant has used the PHILIP MORRIS mark for over a century. The mark is widely recognized as referring to Complainant and its tobacco products. Complainant cites to Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. 1534894 (Jan. 29, 2014) where that UDRP panel determined that Respondent had common law rights in its PHILIP MORRIS mark. Respondent’s <philipmorrisusa.us> domain name is confusingly similar to Complainant’s trademark. The addition of “.us” is not meaningful.
Respondent has never sought to obtain a trademark containing the domain name or the PHILIP MORRIS mark and has never been known by this domain name at issue. The WHOIS record associated with this <philipmorrisusa.us> domain name provides no connection between Respondent and the name.
Respondent does not have a legitimate noncommercial or fair use right in such a confusingly similar domain name to promote anti-smoking views. While constitutional protections may come into play with the content of a domain name, it is the rules of trademark that govern the acceptability of an Internet domain name. Respondent has no right to use a domain name featuring the PHILIP MORRIS mark to criticize businesses such as Complainant and its competitors in the tobacco industry.
Complainant believes Respondent is actually “Lori Wagner,” an individual who was previously ordered to transfer domain names to Complainant. See Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014). Complainant notes that in that proceeding Respondent states “David L. Delman . . . is also the Respondent of this action . . . based on a legal name change from David L. Delman to Lori Wagner.” Respondent and Lori Wagner share the same mailing address and telephone number. Both Respondent and Lori Wagner are the named respondents in a number of ongoing UDRP proceedings taking place through both the National Arbitration Forum and the World Intellectual Property Office.
Respondent capitalizes on the likelihood that Internet users who see the <philipmorrisusa.us> domain name will associate it with Complainant’s business—not anti-smoking content. Respondent’s free speech protections do not come into play with respect to the content of the Internet domain name itself. Free speech is only found to extend to the content of a website. Respondent cannot defend its use of the domain name by claiming that it has a freedom of speech in the use of another party’s trademarks in Internet domain names.
Respondent had, at all relevant times, full knowledge of Complainant’s rights in the PHILIP MORRIS mark, as noted by Respondent’s prior bad faith registration of domain names containing the mark. Respondent registered the domain name on January 21, 2014.
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 or 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.
It is not necessary for Complainant to have a trademark registration, so long as it can show the mark has gained secondary meaning in the eyes of the consuming public. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant has used the PHILIP MORRIS mark for over a century, and the mark is widely recognized as referring to Complainant and its tobacco products. See, Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014), where that UDRP panel determined that Respondent had common law rights in its PHILIP MORRIS mark. The Panel finds that Complainant has shown the domain name has acquired secondary meaning in the eyes of the consuming public, and Complainant has established Policy ¶ 4(a)(i) rights in the 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.”).
Respondent’s <philipmorrisusa.us> domain name is confusingly similar to Complainant’s trademark. The addition of “.us” is not meaningful. The “.us” country-code top-level domain (“ccTLD”) is not relevant here, nor is the removal of the mark’s spacing. 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)). The “usa” acronym does nothing more to distinguish the domain name as it merely implies the PHILIP MORRIS mark in the context of the United States of America. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). The Panel finds that there is confusing similarity between the domain name and the mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
It appears to the Panel that Respondent has never sought to obtain a trademark containing the domain name or the PHILIP MORRIS mark. There is nothing in the record to suggest Respondent owns any trade or service mark identical to the <philipmorrisusa.us> domain name under 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)).
Respondent has never been known by this domain name. The WHOIS record associated with this <philipmorrisusa.us> domain name provides no connection between Respondent and the name. Respondent agrees that it is not known by this domain name. As such, the Panel finds no reason to conclude Respondent is known by the name under Policy ¶ 4(c)(iii). See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent does not have a legitimate noncommercial or fair use in using such a confusingly similar domain name to promote anti-smoking views. While constitutional protections may come into play with the content of a domain name, it is the rules of trademark law that govern the acceptability of an Internet domain name. Respondent has no right to use a domain name featuring the PHILIP MORRIS mark to criticize businesses such as Complainant and its competitors in the tobacco industry. Traditionally, there is a division between the content of the website itself and the terms that make up the Internet domain name. See, e.g., 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.”). Respondent’s domain name is merely the PHILIP MORRIS mark and a geographic identifier, yet it resolves to the <tobaccofree.org> website wherein anti-smoking speech is contained. Respondent’s rights in the content of a website do not impute onto the domain name itself; Respondent is without a Policy ¶ 4(a)(ii) right or legitimate interest with respect to the domain name. See Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected); see also Robo Enters., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting the respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of the respondent’s website may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant believes Respondent is actually “Lori Wagner,” an individual who was previously ordered to transfer domain names to Complainant. See Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014). In that proceeding Respondent states “David L. Delman . . . is also the Respondent of this action . . . based on a legal name change from David L. Delman to Lori Wagner.” Respondent also acknowledges that it can be considered to be the respondent in the prior UDRP decision. Respondent’s pattern of registering domain names featuring the PHILIP MORRIS mark evidences Policy ¶ 4(b)(ii) as Respondent’s willful behavior has created a pattern of bad faith domain name registration. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent capitalizes on the likelihood that Internet users who see the <philipmorrisusa.us> domain name will associate it with Complainant’s business and will only later discover the domain name is used to host anti-smoking material. Respondent’s free speech protections do not come into play with respect to the content of the Internet domain name itself. Free speech is only found to extend to the content of a website. Respondent cannot defend its use of the domain name by claiming that it has freedom of speech rights in the use of another party’s trademarks in Internet domain names. 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 Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”).
Respondent had, at all relevant times, full knowledge of Complainant’s rights in the PHILIP MORRIS mark, as noted by Respondent’s prior bad faith registration of domain names containing the mark. The Panel finds that Respondent did have full knowledge of the PHILIP MORRIS mark, as Respondent admits the same. The Panel finds that the registration of this domain name by Respondent, after having been served with a previous complaint by Complainant is sufficient to establish Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorrisusa.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 22, 2014
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