Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN
Claim Number: FA1610001700123
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is LORI WAGNER / DAVID DELMAN (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorriscomplaints.info>, <philipmorriscomplaints.online>, <philipmorriscomplaints.org>, <philipmorriscomplaints.site>, <philipmorriscomplaints.website>, <philipmorriscomplaintsite.info>, <philipmorriscomplaintsite.online>, <philipmorriscomplaintsite.website>, <philipmorrisreviews.info>, <philipmorrisreviews.online>, <philipmorrisreviews.org>, <philipmorrisreviews.site>, <philipmorrisreviews.website>, <philipmorrisviolations.online>, registered with GoDaddy.com, LLC; and <philipmorriscomplaintsite.org>, registered with Name.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2016; the Forum received payment on October 27, 2016.
On October 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <philipmorriscomplaintsite.online>, <philipmorriscomplaintsite.info>, <philipmorriscomplaintsite.website>, <philipmorrisviolations.online>, <philipmorrisreviews.website>, <philipmorriscomplaints.site>, <philipmorrisreviews.online>, <philipmorriscomplaints.org>, <philipmorrisreviews.site>, <philipmorrisreviews.info>, <philipmorrisreviews.org>, <philipmorriscomplaints.website>, <philipmorriscomplaints.info>, and <philipmorriscomplaints.online> 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 October 28, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <philipmorriscomplaintsite.org> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On October 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@philipmorriscomplaintsite.online, postmaster@philipmorriscomplaintsite.info, postmaster@philipmorriscomplaintsite.website, postmaster@philipmorrisviolations.online, postmaster@philipmorrisreviews.website, postmaster@philipmorriscomplaints.site, postmaster@philipmorrisreviews.online, postmaster@philipmorriscomplaints.org, postmaster@philipmorrisreviews.site, postmaster@philipmorrisreviews.info, postmaster@philipmorrisreviews.org, postmaster@philipmorriscomplaints.website, postmaster@philipmorriscomplaints.info, postmaster@philipmorriscomplaints.online, and postmaster@philipmorriscomplaintsite.org. Also on October 31, 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 November 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
A. PM USA Has Exclusive Rights in “Philip Morris.”
5. PM USA (and various predecessor entities) have used “Philip Morris” continuously throughout the United States for over a century, and the public has come to associate “Philip Morris” with PM USA as a company, and with its tobacco products. See Nu Mark LLC v. Bui Long, WIPO Case No. D2013-1785 (Dec. 22, 2013) (“Common law rights may give rise to trademark rights under paragraph 4(a)(1) of the Policy” when “the indicator in question has become a distinctive identifier associated with the complainant or its goods or services”).
6. PM USA has also registered several Internet domain names incorporating “Philip Morris,” including: philipmorris.com; philipmorris.net; philipmorris.org; and philipmorris.info. The domain name philipmorris.com points to the home page for PM USA, located at http://www.philipmorrisusa.com/en/cms/home/default.aspx, which contains information about the company.
7. 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. See, e.g., Timothy Williams, 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.”). Additionally, PM USA’s own governmental filings demonstrate that the public has significant exposure to the “Philip Morris” name and mark. See, e.g., Excerpts from Annual Report, Form 10K, filed by PM USA’s parent organization, Altria Group, Inc., with the Securities and Exchange Commission for the fiscal year ended December 31, 2014. Net revenues for PM USA in this time period exceeded $21 billion; total assets for the same period exceeded $10 billion.
8. Indeed, previous panels have recognized PM USA’s rights in “Philip Morris”, and the fame of the Philip Morris name. See, e.g., Philip Morris USA Inc. v. Lori Wagner, NAF Claim No. 1534894 (finding that “[t]hrough widespread, extensive use in connection with its products, the PHILIP MORRIS mark is well-known and famous” and PM USA “has rights in the PHILIP MORRIS mark,” and transferring “philipmorrisintl.us” to Complainant); 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”).
B. The Infringing Domain Names Were Improperly Registered and Are Being Improperly Used.
9. The Infringing Domain Name “philipmorriscomplaintsite.org” points to a website (“the Infringing Website”) that includes pay-per-click links to websites on various topics, including links to websites offering for sale copies of the feature film I Love You Philip Morris. These links change from time to time and have included a link to a smoking cessation site. Upon information and belief, these are pay-per-click links, and Respondent derives revenue when Internet users click on these links. Upon information and belief, Respondent did not personally create these links. Rather, based upon a mathematical formula, the links simply appear when an Internet user searches for terms such as “Philip Morris”. While PM USA agrees that cigarette smoking is addictive and PM USA helps connect adult smokers with quitting information, it nevertheless objects to Respondent’s unauthorized use of its name, “Philip Morris”, in connection with the Infringing Website. In addition, one link leads to a webpage purportedly advertising jobs with PM USA, when PM USA has not authorized such an advertisement.
10. The fourteen remaining Infringing Domain Names resolve to inactive websites.
GROUNDS FOR THIS ADMINISTRATIVE PROCEEDING
A. The Infringing Domain Names Are Identical or Confusingly Similar to “Philip Morris.”
11. The Infringing Domain Names are confusingly similar to “Philip Morris,” which through widespread, extensive use in connection with PM USA products has become uniquely associated with PM USA and its products, and is well-known and famous throughout the United States.
12. It is a well-established principle that company or trade names may give rise to trademark rights affording the owner of the name the same protections as any other trademark in certain instances. Indeed, this principle is reflected in decisions pursuant to the UDRP, including those involving Respondent in this case. See, e.g., Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, Claim Number: FA1406001567138 (“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.”); Philip Morris USA Inc. v . Lori Wagner, NAF Claim No. 1534894 (Jan. 29, 2014) (holding PM USA had common law rights in “Philip Morris”); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, Claim Number: FA1406001567134 (“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.”).
13. Here, “Philip Morris” is widely recognized as referring to Complainant and its tobacco products and has been for many years. There is widespread recognition of Philip Morris USA in the media, which, as discussed supra, associates the company with the tobacco products that it manufactures and sells. PM USA owns a portfolio of “philipmorris” domain names, and maintains a website at philipmorris.com that points to information about the company and that provides information designed to help connect adult smokers with expert quitting information.
14. Numerous panels have held that a domain name is confusingly similar to a name or mark where, as here, the domain name incorporates that name or mark in its entirety. See, e.g., Philip Morris USA Inc. v . Lori Wagner, NAF Claim No. 1534894 (Jan. 29, 2014) (“The disputed domain name incorporates the PHILIP MORRIS mark in its entirety” and thus is “confusingly similar to the PHILIP MORRIS mark”); Ferring B.V. v. Johnny Carpela, NAF Claim No. 1080654 (Nov. 5, 2007) (disputed domain name was confusingly similar to complainant’s name when the disputed domain name “incorporate[d] the exact mark”).
15. The addition of words to the exact “Philip Morris” name, here, the terms “gripe”, “complaint(s),” “violations,” “reviews”, and “site,” does nothing to alleviate this confusion. Previous panels have already decided this precise issue involving disputes between PM USA and the same Respondent here. E.g. Philip Morris USA Inc. v. Lori Wagner/David Delman/David@Delman.tv, NAF Claim No. FA1601001655503 (Feb. 13, 2016) (finding a likelihood of confusion between PHILIP MORRIS and “philipmorrisgripe.site”, “philipmorrisgripesite.com”, “philipmorris.reviews”, and “philipmorrisgripesite.reviews”); Philip Morris USA Inc. v. Lori Wagner/David Delman/David@Delman.tv, NAF Claim No. FA1507001627979 (Aug. 19, 2015) (finding a likelihood of confusion between PHILIP MORRIS and “philipmorrisviolations.website,” “philipmorriscigarettediseases.org,” “philipmorriscigaretteskill.com,” “philipmorriscigarettescankill.com,” and “philipmorriscigarettesdiseases.com”); Philip Morris USA Inc. v. David Delman, David@delman.tv and David Nudelman, NAF Claim No. FA1409001579428 (Jan. 29, 2014) (finding the domain name “philipmorrisexposed.com” to “create[] a likelihood of confusion and initial interest confusion” with the “PHILIP MORRIS
mark” ).
16. This is true even where the descriptive wording could be construed as denigrating the Complainant’s mark. Panelists have stressed this point in cases involving PM USA and the very same Respondent here. See Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV , Claim Number: FA1406001567138 (“Respondent’s <philipmorris- unethical.com>, <philipmorris-violations.com>, <philipmorrisviolations.co>, <philipmorrisviolations.com>, <philipmorrisviolations.info>, and <philipmorrisviolations.org> domain names simply add the descriptive terms “violations” or “unethical,” in some cases with a hyphen, to Complainant’s PHILIP MORRIS mark, which does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶4(a)(i).”). See also Philip Morris USA, Inc. v. chance addison / LCP Inc., FA1308001512812 (Sept. 8, 2013) ("marlborosucksballs.com" confusingly similar to complainant's MARLBORO® mark).
17. Finally, as previous panels have found, the addition of top level domains such as “.online”, “.info”, “.website”, “.org”, “.site” or “.reviews” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Philip Morris USA Inc. v billy januar, FA1402001542311 (March 18, 2014) (“The Panel also notes that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis.”).
B. Respondent Has No Legitimate Interests or Rights in the Infringing Domain Names.
18. Respondent has no rights or legitimate interests in the Infringing Domain Names. Respondent has no connection or affiliation with PM USA, its affiliates, or any of the many products provided by PM USA under the Philip Morris name. Upon information and belief, Respondent was never known by any name or trade name that incorporates “Philip Morris” and has never sought or obtained any trademark registrations for “Philip Morris” or any variation thereof. Additionally, Respondent is not a licensee of PM USA and has not obtained permission, either express or implied, from PM USA to use “Philip Morris”, or any domain names incorporating the same, either at the time Respondent registered and began using the Infringing Domain Names, or at any time since. The Whois records associated with the Infringing Domain Names do not identify the registrant by the Infringing Domain Names.
19. Further, Respondent’s wholesale misappropriation of “Philip Morris” as the prominent portion of the Infringing Domain Names is no accident. Clearly, the Infringing Domain Names were chosen to capitalize on the association of the “Philip Morris” name with PM USA and its products. As one panel found in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at § 6.2 (Feb. 18, 2000), when a complainant’s mark is distinctive, it is “not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant”, and thus Respondent could have no legitimate interest in “Philip Morris.”
20. Here, all but one of the Infringing Domain Names (i.e., “philipmorriscomplaintsite.org”) point to an inactive website. It is well-established that where a respondent fails to make any use of the disputed domain name, merely pointing that domain name to an inactive website, such respondent has no rights or legitimate interests in the domain name. See, e.g., Societe Nationale v. Isamel Leviste, WIPO Case No. D2009-1529 (Jan. 11, 2010).
21. That the Infringing Domain Name “philipmorriscomplaintsite.org” currently resolves to a pay-per-click website does not demonstrate Respondent’s legitimate rights or interests in this domain name. William Grant & Sons Limited v. Ageesen Sri, Locksbit Corp. / WhoisGuard Protected, WhoisGuard, Inc., Case No. D2016-1049 (July 14, 2016); MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009 (March 4, 2008) (“The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate
interests.”).1
22. Finally, any argument that Respondent has legitimate rights and interests in the Infringing Domain Names containing “complaint(s)”, “gripe”, or “violations”, because those names are purportedly speech protected by the First Amendment of the U.S. Constitution would be misplaced. Neither the Forum nor ICANN — both global bodies designed to protect the Internet and administer intellectual property policies — is a state actor under U.S. law, and as such they are not bound by First Amendment considerations. See, e.g., Loce v. Time Warner Entertainment Advance/Newhouse P’ship, 191 F.3d 256, 266 (2d Cir. 1999) (affirming dismissal of plaintiff’s claims based on First Amendment where defendant was not a state actor); 1066 Housing Association Ltd. v. Morgan, WIPO Case No. D2007-1461 (Jan. 18, 2008) ( “[T]he act of bringing local law into the assessment of the Policy . . . risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside.”). Respondent’s argument would in fact be a moot point here, because none of the Infringing Domain Names in fact points to an active complaint site.
1 Any argument that Respondent makes based on the fact that Internet users clicking through “philipmorriscomplaintsite.org” may ultimately reach a third-party website about quitting smoking is also unpersuasive. This would not confer upon Respondent any legitimate rights or interests in that domain name especially here, where Respondent is not even maintaining an active complaint site to which “philipmorriscomplaintsite.org” or any of the other Infringing Domain Names resolves. Moreover, even if the Infringing Domain Names did resolve to complaint sites, this would not give Respondent legitimate rights or interests in the Infringing Domain Names. See Jonah Hunt v. Robert Racansky, NAF Claim No. 1471550 (Dec. 31, 2012) (“while [a] Respondent may have rights and legitimate interests in maintaining . . . a complaint website . . . [a] Respondent is not making a legitimate use of a domain name when it uses [a] Complainant’s own trademark in the domain name to divert [a] Complainant’s customers to the gripe site.”).
C. Respondent Registered and Is Using the Infringing Domain Names In Bad Faith.
(i) Respondent Registered the Infringing Domain Names in Bad Faith.
23. All told, Respondent has registered, under the various names that she has used, 65 domain names incorporating “Philip Morris.” Such a pattern of registration demonstrates bad faith. See Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1404001555882 (“Respondent’s willful behavior has created a pattern of bad faith domain name registration”); 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”). This is especially true where, as here, a respondent has previously violated the Policy, as panels have concluded in nine earlier proceedings. See 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”).
24. In addition, Respondent has registered the Infringing Domain Names with full knowledge of Complainant’s rights in “Philip Morris.” Indeed, PM USA brought nine earlier proceedings against Respondent Lori Wagner and/or her multiple aliases involving the registration of “philipmorris” domain names, and PM USA has prevailed in each proceeding. It is thus indisputable that Respondent registered the Infringing Domain Names with full knowledge of PM USA’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”).
25. Moreover, “it has been long established by prior UDRP panels that bad faith registration and use of disputed domain names may be based solely on the worldwide fame of the trademarks or service marks to which those names are confusingly similar” if the registrant “has no connection to the corresponding complainant or its goods or services.” Wal-Mart Stores, Inc.
v. James D’Souza, NAF Claim No. 1060854 (Oct. 15, 2007). As past panels have recognized, the “Philip Morris” name “is well-known and famous.” Philip Morris USA Inc. v. Lori Wagner, (a/k/a Delman), NAF Claim No. FA 1534894 (Jan. 29, 2014). It is thus simply inconceivable that the registrant of the Infringing Domain Names registered them without knowledge of PM USA’s rights. See id.
(ii) Respondent Is Using the Infringing Domain Names in Bad Faith.
26. Respondent’s use of the 14 Infringing Domain Names “philipmorriscomplaintsite.online”, “philipmorriscomplaintsite.info”, “philipmorriscomplaintsite.website”, “philipmorrisviolations.online”, “philipmorrisreviews.website”, “philipmorriscomplaints.site”, “philipmorrisreviews.online”, “philipmorriscomplaints.org”, “philipmorrisreviews.site”, “philipmorrisreviews.info”, “philipmorrisreviews.org”, “philipmorriscomplaints.website”, “philipmorriscomplaints.info”, and “philipmorriscomplaints.online” to point to an inactive site demonstrates bad faith use as well as bad faith registration. See Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, NAF Claim No. 0907001276302 (Sept. 17, 2009) (concluding that failure to make an active use of the infringing domain name supports a finding of registration and use in bad faith); Travelocity.com LP v. Domain Name, NAF Claim No. 1001001305135 (March 24, 2010) (finding that “Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use”).
27. Likewise, Respondent’s use of “philipmorriscomplaintsite.org” to point to a pay- per-click website from which, upon information and belief, Respondent receives revenue, also constitutes bad faith use. See 3M Company v. Domain Registries Foundation c/o Domain Admin, NAF Claim No. FA1504001614321 (June 7, 2015) (“Respondent has placed a variety of advertisements and hyperlinks as website content located at the disputed domain name, for which Respondent presumably receives click-through fees as shown in Complainant’s Exhibits 6-8. Generally, such behavior has been found indicative of bad faith under Policy ¶4(b)(iv)”; Dr. Martens Int’l Trading GmbH v. Private Whois Service, WIPO Case No. D2011-1191 (Sept. 10, 2011) (“The Respondent appears to have set out to derive click-through revenue from Internet users by creating a likelihood of confusion with the Complainant’s [marks], adopting confusingly similar domain names and using them to host links to third-party websites offering [products for sale]”); CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201 (Mar. 28, 2006) (parked domain name used to generate click-through revenue for registrant was registered and used in bad faith).
28. Were Respondent to argue that it registered “philipmorriscomplaintsite.org” (or any of the other Infringing Domain Names) to use for a gripe site, this argument would not insulate Respondent from a finding of bad faith for the simple reason that none of the disputed domain names point to such a site. Moreover, even if “philipmorriscomplaintsite.org” did point to a complaint site, Respondent’s use of Philip Morris” in this manner would constitute bad faith. See Jonah Hunt v. Robert Racansky, NAF Claim No. 1471550 (“[W]hat the Respondent has done is to select for the domain name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The domain name would be particularly useful for that purpose because it would catch by surprise visitors intended to reach the Complainant’s website.”).
29. The registration and use of the Infringing Domain Names also creates a form of initial interest confusion, which attracts Internet users to the Infringing Domain Names and Infringing Website based on the use of the exact “Philip Morris” name. Respondent has thus selected domain names that misappropriate the “Philip Morris” name for her own benefit and to disrupt PM USA’s business, resulting in bad faith behavior. See, e.g., 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”).
30. Finally, Respondent’s use of domain names fully incorporating “Philip Morris,” despite Respondent’s knowledge of PM USA’s rights in “Philip Morris”, shows Respondent’s bad faith use. See Wal-Mart Stores, NAF Claim No. FA0708001060854 (Oct. 15, 2007). Due to the fame of the Philip Morris name, Respondent surely knew that use of the Infringing Domain Names would likely cause confusion as to PM USA’s affiliation, sponsorship, or endorsement of the Infringing Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities who control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant claims there are two Respondents in this proceeding: LORI WAGNER and DAVID DELMAN. Complainant claims Respondent is one person who has now registered 65 total PHILIP MORRIS domain names. Lori Wagner has previously represented she was previously known as David Delman and she has legally changed her name and gender. David@Delman.TV is merely a pseudonym for the name David Delman. See Additional Submission of Respondents, FA 1409001579428 (Forum Oct. 20, 2014).
Respondent has not contested any of these claims. They form a sufficient basis for this Panel to conclude there is only one true Respondent. It seems clear in light of the evidence submitted, Complainant’s claim is true. The entities controlling the domain names at issue are really single person operating under several aliases. This Panel so determines.
Complainant does not claim it owns a registration of the PHILIP MORRIS mark with any governmental trademark registration authority. However, registration is not required under Policy ¶4(a)(i) if a complainant can demonstrate common law rights. 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 it has common law rights in the PHILIP MORRIS mark dating back over a century. A complainant must demonstrate the mark has acquired secondary meaning for a complainant to have acquired rights in the mark. Relevant evidence of secondary meaning can include longstanding continuous use of the mark, media recognition, or ownership of domain names that are identical to the mark. See Gourmet Depot v. DI S.A., FA 1378760 (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.”). Complainant has provided such information. Complainant has also provided proof of ownership of domains such as <philipmorris.com> and <philipmorris.org>. Complainant has also provided media recognition of its use of the mark. There are previous UDRP decisions between the same parties where panels found Complainant has common law rights in the PHILIP MORRIS mark. See Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567138 (Forum Aug. 4, 2014) (“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.”); Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Forum Jan. 29, 2014) (holding that Philip Morris USA had common law rights in “Philip Morris”); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 1567134 (Forum Aug. 4, 2014) (“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.”); Philip Morris USA Inc. v. Lori Wagner / David Delman / David@Delman.TV, FA 1627979 (Forum Aug. 19, 2015) (“Complainant has demonstrated its common law rights in the PHILIP MORRIS mark under Policy ¶4(a)(i).”). Complainant’s evidence is sufficient to establish a secondary meaning. This Panel finds Complainant has common law rights in the PHILIP MORRIS mark.
Complainant claims Respondent’s domain names are confusingly similar to the PHILIP MORRIS mark because they each incorporate the mark in its entirety, less the space, and add terms like “gripe,” “complaint(s),” “violations,” “reviews,” and “site,” and the gTLDs “.online,” “.info,” “.website,” “.org,” “.site,” or “.reviews.” Adding such generic terms have not distinguished domain names in the past. See Philip Morris USA Inc. v. Lori Wagner/David 8 Delman/David@Delman.tv, FA1601001655503 (Forum Feb. 13, 2016) (finding a likelihood of confusion between PHILIP MORRIS and “philipmorrisgripe.site”, “philipmorrisgripesite.com”, “philipmorris.reviews”, and “philipmorrisgripesite.reviews”); Philip Morris USA Inc. v. Lori Wagner/David Delman/David@Delman.tv, FA1507001627979 (Forum Aug. 19, 2015) (finding a likelihood of confusion between PHILIP MORRIS and “philipmorrisviolations.website,” “philipmorriscigarettediseases.org,” “philipmorriscigaretteskill.com,” “philipmorriscigarettescankill.com,” and “philipmorriscigarettesdiseases.com”); see also Philip Morris USA Inc. v billy januar, FA1402001542311 (Forum Mar. 18, 2014) (“The Panel also notes that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis.”). A TLD (whether a gTLD, sTLD or ccTLD) is also disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Forum Nov. 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶4(a)(i) analysis); ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”); Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶4(a)(i) analysis.). Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. The domain names at issue here are confusingly similar to the PHILIP MORRIS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the domain names. Respondent has no affiliation with Complainant, and is not commonly known by any of the domain names under Policy ¶4(c)(ii). Where a respondent has not responded, the WHOIS of record and common sense normally determines whether or not there are any Policy ¶4(c)(ii) rights. 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). The WHOIS merely indicates that registrant of the domain names is “LORI WAGNER / DAVID DELMAN.” There is no obvious connection between those names and any of the disputed domain names. Respondent is not commonly known by any of the domain names under Policy ¶4(c)(ii).
All but one domain name—<philipmorriscomplaintsite.org>—resolve to inactive websites. This means the domain names are not being used in any obvious fashion (the error message reads “DNS address could not be found.”). Failure to make an active use of a domain name does not confer any rights or legitimate interests. See 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).
There is also no bona fide offering of goods or services or any legitimate noncommercial or fair use through <philipmorriscomplaintsite.org> because it resolves to a rotating series of webpages (a dynamic parking page), including pay-per-click sites on various topics, such as websites offering for sale copies of the feature film I Love You Philip Morris, a smoking cessation site, and a webpage purportedly advertising jobs with Complainant. It certainly isn’t an active gripe or complaint site. Such a use is not bona fide or legitimate. 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). Respondent is not marketing a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and used the domain names in bad faith. There is no doubt Respondent has engaged in a pattern of bad faith domain registrations, having nine previous UDRP decisions ordering transfer (see Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (Forum Jan. 29, 2014); Philip Morris USA Inc. v. David Delman/Lori Wagner, D2013-2182 (WIPO Mar. 25, 2014); Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1404001555881 (Forum May 22, 2014); Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA1404001555882 (Forum June 3, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA1406001567134 (Forum Aug. 4, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA1406001567138 (Forum Aug. 4, 2014); Philip Morris USA Inc. v. Lori Wagner, FA1503001608813 (Forum May 7, 2015); Philip Morris USA Inc. v. Lori Wagner/David Delman/David@Delman.tv, FA1507001627979 (Forum Aug. 19, 2015); Philip Morris USA Inc. v. Lori Wagner/David Delman/David@delman.tv, FA1601001655503 (Forum Feb. 13, 2016)), and has registered 15 further infringing domains in this case. Complainant suggests a history of UDRP decisions against a respondent and several infringing domain names in a single dispute should both lead to findings of bad faith under Policy ¶4(b)(ii). This Panel would disagree because Policy ¶4(b)(ii) requires Complainant be prevented from reflecting its mark in a domain name. That clearly hasn’t happened in this case. Nevertheless, this Panel believes Respondent’s actions fall under the penumbra of the Policy ¶4(b). There is no rational reason this Panel can conceive of which would indicate Respondent is (and has been) registering all of these roughly 65 domain names in good faith. This Panel concludes Respondent has registered and uses these 15 domain names in bad faith.
Complainant claims Respondent registered and used the <philipmorriscomplaintsite.org> in bad faith because it resolves to a dynamic parking page pay-per-click website which presumably generates revenue for Respondent. This constitutes bad faith registration and use under Policy ¶4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Respondent’s registration and use of the <philipmorriscomplaintsite.org> domain name is in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s mark and nevertheless registered the 15 domain names at issue in this case. There is no doubt Respondent has been a party to nine UDRP proceedings involving Complainant. While it may be a matter of slight debate if Complainant’s mark is famous (and this Panel believes the mark would qualify as famous, but this decision does not hinge on that fact), there is no possible debate Respondent actually knew of Complainant’s mark because of the nine previous UDRP proceedings between the parties. Respondent has also caused the <philipmorriscomplaintsite.org> to resolve to a webpage purporting to offer jobs at Complainant’s company. A totality of circumstances must be considered in determining actual knowledge under the Policy. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). There is clearly sufficient evidence Respondent knew very well the existence of Complainant’s mark and intended to use it without justification, all of which clearly indicates bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent’s failure to actively use the <philipmorriscomplaintsite.online>, <philipmorriscomplaintsite.info>, <philipmorriscomplaintsite.website>, <philipmorrisviolations.online>, <philipmorrisreviews.website>, <philipmorriscomplaints.site>, <philipmorrisreviews.online>, <philipmorriscomplaints.org>, <philipmorrisreviews.site>, <philipmorrisreviews.info>, <philipmorrisreviews.org>, <philipmorriscomplaints.website>, <philipmorriscomplaints.info>, and <philipmorriscomplaints.online> domain names constitutes bad faith registration and use. Each of these domain names resolves to an error page. Under such circumstances, bad faith has been found by multiple panels. 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). Respondent has registered and used the domain names in question in bad faith under the penumbra of Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <philipmorriscomplaintsite.online>, <philipmorriscomplaintsite.info>, <philipmorriscomplaintsite.website>, <philipmorrisviolations.online>, <philipmorrisreviews.website>, <philipmorriscomplaints.site>, <philipmorrisreviews.online>, <philipmorriscomplaints.org>, <philipmorrisreviews.site>, <philipmorrisreviews.info>, <philipmorrisreviews.org>, <philipmorriscomplaints.website>, <philipmorriscomplaints.info>, <philipmorriscomplaints.online>, and <philipmorriscomplaintsite.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 5, 2016
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