Philip Morris USA Inc. v. Kevin Perkins / United States of America
Claim Number: FA1612001707117
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is Kevin Perkins / United States of America (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philip-morris.us>, registered with Google Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2016; the Forum received payment on December 13, 2016.
On December 14, 2016, Google Inc. confirmed by e-mail to the Forum that the <philip-morris.us> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 December 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@philip-morris.us. Also on December 15, 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.
A timely Response was received and determined to be complete on January 4, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on January 6, 2017.
Respondent’s Additional Submission was received and determined to be compliant with the Rules on January 11, 2017.
On January 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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 usTLD 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
Complainant has established common law rights in the PHILIP MORRIS mark through continuous and widespread use of the mark in connection with its business as a leading provider of tobacco products. Respondent’s <philip-morris.us> is confusingly similar to the PHILIP MORRIS mark as it adds a hyphen between the terms “PHILIP” and “MORRIS” and the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in or to <philip-morris.us>. Respondent was never known by any name or trade name incorporating PHILIP MORRIS, and Respondent has also not sought or obtained any trademark registrations for “Philip Morris” or any variation thereof. Additionally, the website merely displays the message, “This site can’t be reached” which does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Annex B.
Respondent registered the domain name in bad faith because Respondent has also registered <altriagroup.us>, which incorporates the ALTRIA mark owned by Complainant’s parent company Altria Group, Inc.—therefore a pattern is present under Policy ¶ 4(b)(ii). Further, Complainant’s mark is ubiquitous and has been found to be a famous mark, imputing actual knowledge to respondents who incorporate the mark fully.
Respondent used the domain name in bad faith because Respondent has inactively held the disputed domain name. See Compl., at Attached Annex B.
B. Respondent
Under Policy ¶ 4(a)(i), Respondent states, “I will concede that Philip Morris USA Inc. does have trademark rights to the name, font, and logo that makes up its brand name . . . . [A]nd do acknowledge that the domain name in question can definitely be construed as being confusingly similar to the complainant’s registered trademark . . . .”
Respondent is in the process of learning web design, and has only held the domain name for four months. Respondent has hired independent contractors to assist in web design, and intends to have a website up and running in March. Respondent intends to use the site as a media outlet pursuant to the First Amendment of the US Constitution.
Respondent distinguishes Complainant’s pattern of bad faith argument from the cited precedent: Philip Morris USA Inc. v. David Delman and Lori Wagner (Case No. D2013-2182). Namely, in that case, there were 12 domains owned by the respondent; here, there is merely 1. Respondent also does not operate for profit, has only held the domain for four months, and intends on developing a website.
Complainant has attempted Reverse Domain Name Hijacking by initiating this dispute.
C. Additional Submissions
Respondent posits no reason for selecting Complainant’s famous name as the sole element in his domain name. Such an omission alone manifests Respondent’s lack of rights and legitimate interests, and shows his bad faith.
Cases involving similar time frames and inactively held domain names have been resolved in Complainant’s favor. See, e.g., Philip Morris USA Inc. v.
Dante Credaro, Two2face Corp., WIPO Case No. D2016-1627 (Oct. 10, 2016) (ordering transfer of “philipmorrisusa.vip”, which did not point to any active website, although respondent registered this domain name in May 2016, only five months before the panel rendered its decision).
Respondent’s alleged noncommercial use of the domain name is immaterial, and Respondent has not given any evidence of his purported plans to use the domain name as a “media outlet.” Further, a mere Internet domain name does not warrant protection under the First Amendment, and this one is no exception as it does not even impart any communicative message, like one that could suggest a website critical of Complainant.
Further, Respondent’s <altriagroup.us> is involved in a separate proceeding and is indeed evidence of a pattern of bad faith. Altria Group, Inc. and Altria Group Distribution Company v. Kevin Perkins, FA1612001707224 (commenced Dec. 19, 2016). Complainant has not engaged in reverse domain name hijacking.
Complainant has distorted reality and misled the Panel, and has a history of obscuring facts. As to Complainant’s assertion that Respondent has not provided evidence of intended use of the domain, Respondent asserts his ‘right to be left alone.’
Respondent is a medical student that does not have the time to master web design. Respondent offers to arrange for an “Under Construction” page to resolve on the website.
Again, Philip Morris USA Inc. v. David Delman and Lori Wagner (Case No. D2013-2182) is distinguishable because the domains in that case were held for several years. If Respondent had held the domain for even one year, Complainant’s argument may have traction, but Respondent has only held the domain name for a few months.
Respondent also does not intend to use the website as a “gripe” site.
Complainant’s mention of the ongoing ALTRIA case is unpersuasive because it is only tangentially related to Complainant’s corporation.
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.
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.
Complainant has established common law rights in the PHILIP MORRIS mark. It has used the mark in its business as a leading provider and marketer of tobacco products for many years. The mark has acquired secondary meaning as a result of this longstanding use of the mark. See Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007).
Moreover, Respondent’s <philip-morris.us> domain name is confusingly similar to Complainant’s mark. The hyphen between PHILIP and MORRIS and the .us ccTLD are insufficient to distinguish the domain name from Complainant’s mark. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002).
In addition, Respondent has conceded that Complainant has trademark rights to its mark and that his domain name can be found to be confusingly similar to Complainant’s mark.
The panel finds that Complainant has established its rights in the mark and that Respondent’s <philip-morris.us> is confusingly similar to its mark within the meaning of Policy ¶4(a)(i).
Respondent has never been known by any name or trade name containing the PHILIP MORRIS mark, nor has he sought a trademark for it. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in Complainant’s mark. Respondent thus has the burden of proof to establish that he has rights and legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
The record shows that Respondent has not offered any evidence to support his assertion that although he has made no use of the domain name he has a plan to establish a website in the future through which he will use the mark for a non-commercial First Amendment purpose. He asserts the website will not be a site for people to post “gripes.” These are vague assertions that are insufficient for him to meet his burden of proof. They are insufficient to demonstrate a legitimate use of Complainant’s mark. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Forum Nov. 7, 2000). To be protected under the First Amendment, Respondent had the burden to show that he had a First Amendment purpose for using Complainant’s mark for which he had no alternative. See Pepsico, Inc. v. Leeds, FA 117870 (Forum Sept. 27, 2002). Respondent has utterly failed to make that showing.
Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of Policy ¶4(a)(ii).
The fact that Respondent has also registered a disputed domain name incorporating the mark of Complainant’s parent company, Altria Group Inc. is sufficient to show his infringement of Complainant’s PHILIP MORRIS mark was made with knowledge of the prior marks of both companies and was intentional infringement of Complainant’s trademark. This is strong evidence of bad faith registration and use in bad faith. See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) and See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007).
These circumstances are sufficient to establish that Respondent has engaged in bad faith registration and use of Complainant’s mark within the meaning of Policy ¶4(a)(iii).
All three elements required under the usTLD Policy having been established, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philip-morris.us> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: January 25, 2017
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