Philip Morris USA Inc. v. DAVID DELMAN,DAVID@DELMAN.TV and DAVID NUDELMAN
Claim Number: FA1409001579428
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 and DAVID NUDELMAN (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com>, registered with Register.com, Inc.; 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 National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 12, 2014 and September 15, 2014, Register.com, Inc. and GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> domain names are registered with Register.com, Inc. and GoDaddy.com, LLC and that Respondent is the current registrant of the names. These registrars have verified that Respondent is bound by the respective 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 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.com, postmaster@philipmorrisincorporated.info, postmaster@philipmorrisincorporated.com, postmaster@philipmorriscompany.com. 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.
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. Complainant has used PHILIP MORRIS in connection with the sale of tobacco for many years. These domain names are confusingly similar to the mark. It is not material that the term “exposed” may infer a critical view of the PHILIP MORRIS mark.
2. Respondent has no rights or legitimate interests in these domain names. First, Respondent has never been known by these domain names. Second, Respondent has yet again registered confusingly similar domain names to promote anti-tobacco rhetoric.
3. Respondent has acted in bad faith. Respondent has had 22 domain names that infringe on Complainant’s marks transferred this year alone. See Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (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 (May 22, 2014); Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA 1555882 (June 3, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (August 4, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (August 4, 2014). Respondent is using the two domain names to engage in critical speech. Respondent had actual knowledge of Complainant’s rights, based on the checkered past between these parties.
B. Respondent’s Contentions
1. Respondent notes that unlike prior disputes between the parties, here there is critical speech on the domain names. In the past, Complainant secured transfer of domain names before Respondent could develop the actual websites, and thus panels transferred the domain names on suspicion that the free-speech use would not actually come to fruition. This is a legitimate noncommercial use.
2. Respondent did not act in bad faith. Respondent never intended to sell the domain names. Further, Complainant failed to register the domain names for many years so it makes no sense that Respondent’s conduct prevents Complainant from registering these domain names. The use of the domain names to criticize a senior user’s products does not in itself create an inference of bad faith. Respondent carefully argues that unlike prior cases between him and Complainant, the dispute here is unique and ought to be decided on its own merits and not merely premised on any notion that prior bad faith immediately assumed bad faith here.
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 Names resolve 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”.
1. Respondent’s <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> domain names are confusingly similar to Complainant’s PHILIP MORRIS mark.
2. Respondent does not have any rights or legitimate interests in the <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> domain names.
3. Respondent registered or used the <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> 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.
The Panel agrees that despite lacking a formal registration of the PHILIP MORRIS mark, Complainant can prevail so long as it shows trademark rights by way of evidence consumers identify the mark as the source or origin of particular tobacco products. 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 claims that its PHILIP MORRIS mark is famous and well known around the world. The Panel agrees that as Respondent admits that Complainant is a senior user, there is sufficient basis for Policy ¶ 4(a)(i) rights here based on common law rights, despite Complainant’s cancellation of most of its PHILIP MORRIS marks. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant claims that all of the <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> domain names are confusingly similar to the PHILIP MORRIS mark. The Panel agrees that adding “company” or “incorporated” is of little distinction. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The Panel further agrees that the term “exposed,” while critical, does not necessarily negate a confusing similarity. See, e.g., Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum July 26, 2004) (finding the <fuckyahoo.com> domain name confusingly similar to the complainant’s YAHOO! mark). Thus, the Panel agrees that all of the domain names are confusingly similar to the PHILIP MORRIS mark under 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 argues that Respondent has no rights or legitimate interests in these domain names—first, because Respondent has never been known by these domain names. The Panel agrees that as Respondent emphatically declares it is not known by the domain name in its Response, there is no reason to assess this issue under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Second, Complainant argues that Respondent has yet again registered confusingly similar domain names to promote anti-tobacco rhetoric. The Panel notes that all of these domain names are being used to promote anti-tobacco messages. See Compl., at Attached Ex. E. This Panel does not find the speech included on the disputed domain name to be sufficient to outweigh the confusing similarity of the domain name, and here agrees that the ordinary rule is to allow critical speech only on non-infringing domain names. See, e.g., Saul Zaentz Company v. Sam Solomon, FA 1505579 (Jul. 16, 2013) (transferring six domain names including “thehobbitisracist.com,” which redirected users to respondent’s site critical of complainant, and stating “the subject matter of the domain name itself and the use of trademarks within a domain name are not protected by free speech rights”).
Complainant argues that Respondent has had 22 domain names that infringe on Complainant’s marks transferred this year alone. See Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (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 (May 22, 2014); Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA 1555882 (June 3, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (August 4, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (August 4, 2014). The Panel agrees that these many cases in the past year suggest that Respondent is on a mission of bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Complainant further argues that Respondent is using the domain names to engage in critical speech. In Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005), the panel found that a dichotomy existed between the content of a website (which could be protectable) and the domain name itself (which cannot be infringing). This Panel finds that Policy ¶ 4(a)(iii) bad faith exists when Respondent appropriates the confusingly similar domain names to engage in his own speech conduct.
Complainant claims that Respondent had actual knowledge of Complainant’s rights, based on the checkered past between these parties. The Panel agrees that as the earliest domain name registration was February 16, 2014—after decisions were rendered against Respondent in UDRP hearings by the World Intellectual Property Organization and the National Arbitration Forum—there is clearly notice on behalf of Respondent to imply Policy ¶ 4(a)(iii) bad faith. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., 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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipmorrisexposed.com>, <philipmorrisincorporated.info>, <philipmorrisincorporated.com>, and <philipmorriscompany.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 23, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page