Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV
Claim Number: FA1507001627979
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 / DAVID@DELMAN.TV (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>, 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.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2015; the Forum received payment on July 8, 2015.
On July 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> 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 July 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2015 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@philipmorris.website, postmaster@philipmorrisviolations.website, postmaster@philipmorriscigarettediseases.org, postmaster@philipmorriscigaretteskill.com, postmaster@philipmorriscigarettescankill.com, postmaster@philipmorriscigarettediseases.com. Also on July 14, 2015, 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 August 3, 2015.
Complainant's timely additional submission to the National Arbitration Forum was received on August 6, 2015.
Respondent's timely additional submission to the National Arbitration Forum was received on August 11, 2015.
On August 07, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>, domain names are identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that
· 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;
· <philipmorris.website> only differs from the PHILIP MORRIS mark through the addition of the top-level domain “.website.”;
· the other disputed domain names in question, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> only add descriptive terms and top-level domains to the Complainant’s mark which do not affect the confusing similarity between the PHILIP MORRIS mark and the disputed domain name, even if the descriptive terms denigrate the mark.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use the PHILIP MORRIS mark in any manner;
· Respondent’s co-opting of Complainant’s entire PHILIP MORRIS mark in the disputed domain names indicates that Respondent is intending to divert Complainant’s customers illegitimately as Respondent’s appropriation of the mark is not related to Respondent’s intentions or interest in the mark.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent has demonstrated a pattern of bad faith registration, including previous cases involving Complainant that leads to an inference of bad faith in this instance;
· Respondent had actual knowledge of Complainant’s rights in the PHILIP MORRIS mark at the time of registration;
· Respondent has operated a gripe site, which necessitates a finding of bad faith under a non-exclusivity analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent argues in the Response that
· Respondent concedes that it has not been commonly known by the disputed domain names, however, use of the domain names is legitimate because the Respondent is using the domains to provide noncommercial anti-smoking commentary;
· Respondent has not registered and used the domain names in bad faith because Respondent’s registration and use of the domain names is for the purposes of criticizing the Complainant and the Complainant’s practices which is protected by the free speech guarantee of the Constitution;
· Respondent’s registration and use of the disputed domain names does not properly fit any of the ¶ 4(b) categories that illustrate bad faith registration and use domain names.
C. Additional Submissions
Complainant
In the additional submission the Complainant argues that
· Respondent’s principal argument that the registration of six domain names incorporating Complainant’s “philipmorris” name constitutes protectable free speech and does not create confusion, because they point to an anti-smoking website is irrelevant analogous decisions -- including those involving other “philipmorris” domain names registered by Respondent -- make clear that there is a difference between registering a domain name that misappropriates another’s rights and posting content critical of another on a website to which the domain name points;
· Other panels, including those addressing Respondent’s domain names, have likewise held that it is irrelevant to the confusion analysis whether the Infringing Domain Name resolves to a website critical of the complainant;
· Contrary to Respondent’s assertion, the inclusion of derogatory terms in the domain names at issue, e.g., “philipmorriscigarettescankill.com” and “philipmorrisviolations.website”, does not dispel confusion;
· Other panels interpreting the Policy have held that a non-commercial use may constitute bad faith registration and use.
Respondent
In the additional submission the Respondent argues that
· Respondent’s domain names are not likely to cause confusion of whether Respondents’ websites are from Philip Morris USA or approved by Philip Morris USA;
· Respondent’s domain names make fair use of the Philip Morris USA’s trademarks to designate the subject of Respondents’ criticism;
· Respondent’s domain names are non-commercial use;
· Respondent’s domain names are non-commercial speech protected under the First Amendment;
· Respondent’s domain names are non-commercial speech protected under the California Constitution;
· Respondent’s lacks a bad faith intent to profit from Respondents’ domain names;
· Respondents believed and had reasonable grounds to believe that the use of the domain names was a fair use or otherwise lawful.
Complainant has used “Philip Morris” continuously throughout the United States and has established common law rights in the mark PHILIP MORRIS. Complainant conducts business under several domain names incorporating its PHILIP MORRIS mark including.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which 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.”
Based on the contentions of the parties and that Respondent in its response did not question the common control of the disputed domain names, the Panel found it proven that the disputed domain names were subject to common control by a single Respondent who is using multiple aliases.
Complainant contends that its rights in the PHILIP MORRIS mark stem from its continuous and extensive use of the mark in connection with its business as a leading provider of tobacco products. In order to establish its common law rights, Complainant includes numerous articles attesting to its longstanding use of the PHILIP MORRIS mark. Complainant asserts it has also been a party to UDRP disputes where previous panels have held that Complainant has rights in the PHILIP MORRIS mark.
The Panel finds that there is no need be a valid trademark registration with a governmental authority in order to establish rights under Policy ¶ 4(a)(i). 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)).
The Panel has reviewed Complainant’s rights under the common law and found that Complainant has demonstrated its common law rights in the PHILIP MORRIS mark under Policy ¶ 4(a)(i). See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).
Panel notes that other panels have held that Complainant has rights in the PHILIP MORRIS mark. See Philip Morris USA Inc. v. Lori Wagner, FA 1312001534894 (Nat. Arb. Forum Jan. 29, 2014); Philip Morris USA Inc. v. David Delman/DAVID@DELMAN.TV, FA1404001555882 (Nat. Arb. Forum June 3, 2014).
Complainant argues that Respondent’s disputed domain names are confusingly similar to the PHILIP MORRIS mark.
Since the domain <philipmorris.website> only differs from the PHILIP MORRIS mark through the addition of the top-level domain “.website.”, this Panel is on the opinion – as other panels have routinely found - that the addition of a top-level domain does not affect an analysis of confusing similarity therefore the Panel finds the domain name <philipmorris.website> is confusingly similar to the PHILIP MORRIS mark. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”)
In regards to the domains <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com>; all include the PHILIP MORRIS mark in its entirety only adding generic terms. This Panel shares the view of previous panels which have found that adding a generic term to a complainant’s mark does not alleviate confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Therefore, this Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and all disputed domain names in contention are confusingly similar to the PHILIP MORRIS mark.
As to the second element, 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).
Complainant argues that Respondent lack rights or legitimate interests in the disputed domain names. Complainant claims that Respondent has not been commonly known by the disputed domain names, nor has Respondent been authorized to use the PHILIP MORRIS mark in any manner. WHOIS information for the disputed domain names lists either “David Delman” or “Lori Wagner” as the registrant of the disputed domain names. Panel notes that Respondent conceded that it has not been commonly known by the disputed domain names.
Based on the foregoing the Panel finds that Respondent is not commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent’s co-opting of Complainant’s entire PHILIP MORRIS mark in the disputed domain names indicates that Respondent is intending to divert Complainant’s customers illegitimately. The Panel finds, as other panels have, that a Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the confusing similarity between a domain name and the PHILIP MORRIS mark to divert internet users to their own website. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel notes that a Respondent has a right to comment or criticize Complainants’ business practices, however Respondent had no right to do so in this manner, namely registering a domain name which contains the entire PHILIP MORRIS mark. Complainant and Respondent have been involved in UDRP disputes under similar circumstances. See Philip Morris USA Inc. v. DAVID DELMAN/DAVID@DELMAN.TV, NAF Case No. FA1404001555882; Philip Morris USA Inc. v. David Delman and Lori Wagner, WIPO Case No. D2013-2182 (March 25, 2014) (transferring seven “philipmorris” domain names to PM USA, and holding “Respondents cannot masquerade as Complainant in order to exercise their right to free speech.)
Based on the above the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has demonstrated a pattern of bad faith registration, which may lead to an inference of bad faith in this instance under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. DAVID DELMAN,DAVID@DELMAN.TV and DAVID NUDELMAN, FA 1409001579428 (Nat. Arb. Forum Oct. 20, 2014); Philip Morris USA Inc. v. Lori Wagner (a/k/a Delman), FA 1534894 (Nat. Arb. Forum Jan. 29, 2014); Philip Morris USA Inc. v. Lori Wagner, FA 1503001608813 (Nat. Arb. Forum. May 7, 2015).
The Panel finds, as other panels have, that previous adverse UDRP decisions can demonstrate a respondent’s bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel notes that other panels have also found multiple infringing domain names in a single UDRP proceeding to be dispositive. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant argues that in light of Respondent’s use of the disputed domain names in connection with “gripe” sites, bad faith registration and use must follow. In support of this point, Complainant cites a previous UDRP dispute with Respondent where the panel found for Complainant, stating, “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.” Philip Morris USA Inc. v. David Delman/ DAVID@DELMAN.TV, FA 1555882 (Nat. Arb. Forum June 3, 2014).
The Panel finds as other panel in the previous UDRP dispute between Complainant and Respondent that 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Accordingly, this Panel finds that there is sufficient evidence to conclude Respondent’s use and registration of the disputed domain names constitutes bad faith per 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 <philipmorris.website>, <philipmorrisviolations.website>, <philipmorriscigarettediseases.org>, <philipmorriscigaretteskill.com>, <philipmorriscigarettescankill.com>, and <philipmorriscigarettediseases.com> domain names be TRANSFERRED from Respondent to Complainant .
dr. Katalin Szamosi Panelist
Dated: 19 August, 2015
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