Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV
Claim Number: FA1406001567134
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 NAMES
The domain names at issue are <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2014; the National Arbitration Forum received payment on June 27, 2014.
On June 27, 2014, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@philipmorriscompanies.us, postmaster@philipmorrisinc.us, postmaster@philipmorrisviolations.us. Also on June 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
1. Respondent’s <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names are confusingly similar to Complainant’s PHILIP MORRIS mark.
2. Respondent does not have any rights or legitimate interests in the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names.
3. Respondent registered and uses the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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. Complainant conducts business under several domain names incorporating its PHILIP MORRIS mark including <philipmorris.com>, <philipmorris.net>, <philipmorris.org>, and <philipmorris.info>.
Respondent uses the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names to resolve to a third-party website.
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(e), 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 (Nat. Arb. 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 argues that there is widespread recognition of Philip Morris USA in the media, which closely associates the company with the tobacco products that it manufactures and sells. The Panel notes the following media articles: “Richmond Awaits a Bold Antipoverty Plan,” THE NEW YORK TIMES (Oct.15, 2013) describing “Philip Morris USA” as “the nation’s largest tobacco company”); No More Delay in Tobacco Decision, LOS ANGELES TIMES (Jan. 27, 2012) describing “Philip Morris USA, maker of top-selling Marlboro cigarettes” as one of “the largest U.S. cigarette makers”; Marlboro Goes Smokeless, CHICAGO TRIBUNE (June 12, 2007) (“For decades, the nation’s largest cigarette maker, Philip Morris USA, has cranked out tens of billions of cigarettes annually,
including its Marlboro brand.”) Complainant also provides evidence of its widespread use of the PHILIP MORRIS mark in domain names that resolve to websites that contain information about the history of Complainant, Complainant’s products, and about how to quit smoking. 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. Previous panels have likewise recognized Complainant’s rights in the PHILIP MORRIS mark. See Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. 1534894 (where Complainant’s use of PHILIP MORRIS was continuous and ongoing, finding that “[t]hrough widespread, extensive use in connection with its products, the
PHILIP MORRIS mark is well-known and famous” and Complainant “has rights in the PHILIP MORRIS mark,” and transferring “philipmorrisintl.us” to Complainant); see also Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1404001555882 (“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”).
Respondent’s <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names simply add the descriptive terms “companies,” “inc,” or “violations” to Complainant’s PHILIP MORRIS mark, which does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Respondent has also added the generic top-level domain (“gTLD”) “.us” to the disputed domain names, inconsequential to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names are confusingly similar to Complainant’s PHILIP MORRIS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent is not known by the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names, and has Complainant not authorized Respondent to use PHILIP MORRIS in domain names. The WHOIS information lists “DAVID DELMAN / DAVID@DELMAN.TV” as the registrant of record for the disputed domain names. In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), the panel did not find for the respondent under Policy ¶ 4(c)(ii) when no evidence in the record tied the respondent’s name with the domain name. The Panel similarly finds that there is no basis for determining Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent currently uses the disputed domain names to resolve to a third-party anti-smoking website, which does not establish Respondent’s rights or legitimate interests in the domain names. Complainant cites previous UDRP determinations against Respondent for similar uses of its PHILIP MORRIS mark. See, e.g., Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 (March 25, 214) (involving the same Respondent, David Delman, transferring seven “philipmorris” domain names to complainant, and holding “Respondents cannot masquerade as Complainant in order to exercise their right to free speech. Respondents concede that Complainant owns and has exclusive rights to use the trade name ‘Philip Morris’ and that Complainant has used the mark for over a century and a half; and as a result, the trademark is distinctive to the products it sells and not related to Respondents’ intentions or interest in the mark.”). The Panel finds that Complainant has the right to control the use of its own mark and, though Respondent has the right to criticize Complainant, it may not do so using Complainant’s mark. See Diners Club Int’l, Ltd. v. Infotechnics Ltd., NAF Claim No. FA 0169085 (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,” transferring domain name <diners-club.net> which incorporated complainant’s DINERS CLUB mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence that Respondent has registered a total of nineteen domain names incorporating “Philip Morris,” and cites several previous UDRP determinations against Respondent. See, e.g., Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1404001555882 (concluding “Respondent’s [Delman’s] willful behavior has created a pattern of bad faith domain name registration”). The Panel finds that Respondent has engaged in a pattern of bad faith registration incorporating Complainant’s mark. See Enterprise Rent-a-Car Co. v. Domain Park Ltd., NAF Claim No. 1108660 (Dec. 27, 2007) (“registration of multiple domain names using the Complainant’s marks . . . is evidence of bad faith”); see also Getty Images (US) Inc. v. Foo, NAF Claim No. 1535953 (Feb. 24, 2014) (“the Panel considers Respondent’s history of adverse UDRP proceedings as establishing a pattern of bad faith [sufficient to] infer [that Respondent registered [the disputed names] in bad faith”).
Complainant asserts Respondent registered the disputed domain names with full
knowledge of Complainant’s rights in the PHILIP MORRIS mark and argues that, prior to registering the disputed domain names, Respondent had been the subject of four separate proceedings involving Respondent’s registration of 10 “philipmorris” domain names where the panels transferred the domain names to Complainant. The Panel agrees that it is indisputable that Respondent registered the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names with actual knowledge of Complainant’s rights, which is clear evidence of bad faith. See, e.g., Minicards Vennootschap v. Moscow Studios, NAF Claim No. 1031703 (Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under the Policy after concluding that respondent had “actual knowledge of Complainant’s mark when [respondent] registered the disputed domain name”).
Respondent has registered and is using the disputed domain names to divert Internet users seeking Complainant to a third-party website for Respondent’s benefit, and to disrupt Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii). See Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. 1534894 (Jan. 29, 2014) (transferring domain name when inclusion of the exact Philip Morris name created “initial interest confusion”); Hunter Fan Co. v. MSS, NAF Claim No. 098067 (Aug. 23, 2001) (“use of [a] domain name comprised of Complainant’s mark in a manner likely to cause initial interest confusion demonstrates bad faith.”).
The Panel finds, as other panels have, that it is immaterial that the disputed domain names currently point to an anti-smoking website; Respondent’s use of Complainant’s PHILIP MORRIS mark in domain names is nonetheless in bad faith. See Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV FA1404001555882 (“Respondent’s [Delman’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.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorriscompanies.us>, <philipmorrisinc.us>, and <philipmorrisviolations.us> domain names be TRANSFERRED from Respondent to Complainat.
Sandra J. Franklin, Panelist
Dated: August 4, 2014
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