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Merrell Pharmaceuticals Inc. and Aventis Pharma SA v. Russel Allegra [2005] GENDND 465 (19 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris USA Inc. v. Domain Admin

Case No. D2005-0108

1. The Parties

The Complainant is Philip Morris USA Inc., New York, New York, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Domain Admin, Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The domain name in dispute <virginiaslims.com> (herein the “domain name in dispute”) is registered with Parava Networks, Inc. dba RegistrateYa.com & nAAme.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2005. On February 1, 2005, the Center transmitted by email to Parava Networks, Inc. dba RegistrateYa.com & nAAme.com a request for registrar verification in connection with the domain name in dispute. On February 1, 2005, Parava Networks, Inc. dba RegistrateYa.com & nAAme.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2005.

The Center appointed J. Nelson Landry as the Sole Panelist in this matter on March 18, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant manufactures, markets and sells cigarettes, including cigarettes under its VIRGINIA SLIMS trademark. VIRGINIA SLIMS cigarettes have been made and sold by Philip Morris USA and various predecessor entities since 1968. The Complainant is the registered owner of numerous VIRGINIA SLIMS trademarks on the Principal Register of the United States Patent and Trademark Office, all of which are valid, subsisting and incontestable, namely, VIRGINIA SLIMS in 1970, VIRGINIA SLIMS Label in 1971, VIRGINIA SLIMS Label in 1971, VIRGINIA SLIMS LIGHTS Label in 1983 and VIRGINIA SLIMS LIGHTS Label in 1985. (herein the “Virginia Slims Trademarks” or “Trademarks”)

The Complainant has spent substantial time, effort and money advertising and promoting the VIRGINIA SLIMS trademarks throughout the United States. Major newspapers and magazines in the United States and other nations have, in the period 1990 to 2002, commonly acknowledged that the VIRGINIA SLIMS Trademarks are well-known and even famous in some countries. (Exhibit D).

The domain name in dispute was originally registered with GKG.NET Motherboard.com, the business name of Gregory A. Ricks. On August 3, 2004, and November 16, 2004, the Complainant wrote to Mr. Ricks stating that his registration and use of the domain name in dispute infringed Complainant’s rights. Mr. Ricks never replied to either the letter or the e-mail. Thereafter Mr. Ricks transferred the domain name in dispute since it is now registered in the name of the Respondent Domain Admin.

The Respondent is using the domain name in dispute to attract Internet users to an active website located at “www.virginiaslims.com”. This site proclaims itself “The top QUIT SMOKING resources on the net”, displays a photograph of a cigar butt, lists references to different smoking-related products and contains a search engine and commercial directory which links the Internet visitor to websites of other parties selling cigar and cigarette related products and services over the Internet.

On January 24, 2005, the Complainant wrote to the Respondent stating that Respondent’s registration and use of the domain name in dispute infringed Complainant’s rights. The letter was returned to the Complainant as undeliverable, and the latter received no response or bounce back message to its email message containing the letter.

The Respondent has never sought nor obtained any trademark registrations for “Virginia Slims” and the Respondent is not a licensee of the Complainant nor has the Respondent obtained permission, either express or implied, from the Complainant to use the VIRGINIA SLIMS Trademarks, or any domain names incorporating such trademarks, either at the time of registration and when the Respondent began using the domain name in dispute, or at any time since.

An Internet search for “virginia slims” performed on the Google search engine on January 26, 2005, yielded 101,000 results, wherein the first ten refer exclusively to VIRGINIA SLIMS cigarettes, including in the first one the mention of 1968 as the introduction date.

5. Parties’ Contentions

A. Complainant

The Complainant, a corporation organized and existing under the laws of the Commonwealth of Virginia, contends that through widespread, extensive efforts, the VIRGINIA SLIMS Trademarks have become distinctive and are uniquely associated with the Complainant and its products and that its Trademarks are well known and famous. See America Online, Inc. v. LCGM, Inc., 46 F. Supp. 2d 444, 450 (1998).

The Complainant further contends that the domain dame in dispute is confusingly similar to the Complainant’s Trademarks because it wholly incorporates the distinctive elements VIRGINIA SLIMS of the Trademarks and therefore, when it registered the domain name in dispute, the Respondent purposefully selected a domain name that incorporated the VIRGINIA SLIMS Trademarks.

According to the Complainant, Internet users looking to obtain information about the Complainant or its VIRGINIA SLIMS brands of cigarettes may very well type in the phrase “virginia slims” followed by “.com” and be diverted to Respondent’s website. Courts and Panels recognize that consumers expect to find a company on the Internet at a domain name comprised of the company’s name or trademark. See Panavision International L.O. v. Toeppen, [1998] USCA9 991; 141 F.3d 1316, 1327 (9^th Cir. 1998) and AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276. Moreover, the addition of the generic top-level domain name “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark; see Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA165119 and Universal City Studios Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Complainant submits that when users arrive at the “www.virginiaslims.com” website, they may mistakenly believe that they are being directed to a website sponsored by the Complainant and that permits the Respondent wrongfully to capitalize on Complainant’s goodwill to divert Internet traffic to its site; see Brookfield Communications, Inc. v. West Coast Entm’t Corp., [1999] USCA9 225; 174 F.3d 1036, 1062 (9^th Cir. 1999).

The Complainant represents that the Respondent has thus engaged in the violation of numerous U.S. laws, namely trademark infringement in violation of Section 32(a) of the Lanham Act, 15 U.S.C. §1114, acts of unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and by misappropriation of the Trademarks as part of the domain name in dispute, violation under the Federal Trademark Dilution Act. The Complainant relies on numerous cases, of which its counsel provided copies most appreciated for a non U.S. resident panel, where Courts made such findings. See Playboy Enters, Inc. v. Asiofocus Intl., Inc., no 97-734-A, 1998 WL 72400 (1998). 15 U.S.C. § 1125(c) and Washington Speakers Bureau, Inc. v. Leading Authorities Inc., 33 F. Supp. 2d488, 503 (1999) and Playboy Enters, Inc. v. Calvin Designer Label, 985 F. Supp. 1220, 1221 (1997). According to the Complainant, since others’ goods and services are indeed offered on the “www.virginiaslims.com” website, the Respondent dilutes Complainant’s VIRGINIA SLIMS Trademarks by suggesting that the Complainant is associated with, or sanctions these goods.

The Complainant further submits that the Respondent has no rights or legitimate interests in the domain name in dispute and Respondent’s bad faith is manifest in this instance by the selection of the VIRGINIA SLIMS Trademarks as part of the domain name in dispute.

According to the Complainant, having regard to the high yield under “Virginia slims” on the Google search engine, Respondent’s misappropriation is no accident. Clearly, the Respondent chose to use these famous Trademarks to draw consumers who smoke to its website by capitalizing on users’ association of the VIRGINIA SLIMS Trademarks; see Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant alleges that the Respondent has registered the domain name in dispute in bad faith by doing so with knowledge of the Complainant’s rights in the VIRGINIA SLIMS Trademarks and that, first, it is simply inconceivable that the Respondent was unaware of Complainant’s rights which have achieved worldwide fame, see Bloomberg L.P.. v. Boo Design Services a/k/a BNY Bulletin Board, National Arbitration Forum (NAF) Claim No. FA 97043 and, second, even a simple Internet search would have revealed Complainant’s extensive use of the VIRGINIA SLIMS Trademarks as a source identifier for its tobacco products.

Finally, the Complainant contends that the Respondent has used the domain name in dispute in bad faith because it has attempted to attract Internet users, for commercial gain, to a website by creating a likelihood of confusion with the VIRGINIA SLIMS Trademarks. The Respondent has used the domain name in dispute to capitalize on the fame of the VIRGINIA SLIMS Trademarks and lure Internet users to its commercial directory website. As such, Respondent registered and used the domain name in dispute in bad faith and has been “unjustly enriched by a potential increase in users who are seeking a website operated by Complainant but mistakenly visited Respondent’s website”. See ESPN, Inc. v. Players Sportsbook & Casino, NAF Claim No. FA95402 and in Telstra, supra, where the panel found that the complainant’s numerous trademark registrations, together with complainant’s wide reputation in the name “Telstra”, compelled a finding that the respondent’s registration of the domain name <telstra.org> was in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence shows that the Complainant clearly has rights in a family of registered Trademarks incorporating the VIRGINIA SLIMS distinctive elements, all of which are valid, subsisting and incontestable under 15 USC § 1065. While the VIRGINIA SLIMS first Trademarks was registered about 35 years ago and used since 1968, it is already reportedly among the most widely recognized trademarks in the United States.

The domain name in dispute <virginiaslims.com> incorporates the distinctive elements VIRGINIA SLIMS of the Trademarks in their entirety. The presence of the suffix”.com” does not deter the viewer from readily focusing on the Trademarks.

The Panel finds that the domain name in dispute is identical or confusingly similar to Complainant’s Trademarks.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by stating that the Respondent has registered the domain name <virginiaslims.com>, but that it is not making legitimate non-commercial or fair use of the domain name in dispute.

Furthermore, the Complainant has never given a license nor in any way authorized Gregory A. Ricks or the Respondent to make use of Complainant’s Trademarks. There is no evidence that either Mr. Ricks or the Respondent has ever engaged is any legitimate business under the VIRGINIA SLIMS trademarks.

Considering the absence of any evidence of legitimate interest in the domain name in dispute by the Respondent, pursuant to Rules, paragraph 14(b), the Panel draws an adverse inference that the Respondent does not have any such evidence.

This Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute. The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and is used in bad faith.

While under 15 USC § 1072 the registration of the numerous VIRGINIA SLIMS Trademarks constitutes constructive notice of the Trademarks to US citizens, this Panel considers that it is not necessary to debate whether such constructive notice, which clearly applied to Mr. Ricks at the time of registration, does apply to the Respondent who is not located in the United States, in view on the uncontradicted evidence in this case. The Complainant has shown that a simple search for VIRGINIA SLIMS on the Google search engine, in excess of 100,000 results were observed in January 2005, of which the first ten related to the Complainant’s VIRGINA SLIMS cigarettes. This is no surprise when one considers that the Trademarks all have the unique combination of VIRGINIA and SLIMS and therefore, this Panel cannot see, under the present circumstances, how the Respondent could not have had knowledge of the Trademarks of the Complainant, particularly when the links in Respondent’s website redirect the Internet visitor to websites of tobacco products suppliers. It is inconceivable to this Panel that Gregory A. Ricks when he registered the domain name in dispute and thereafter the Respondent, when he acquired the domain name from Gregrory A. Ricks, were not aware of the VIRGINIA SLIMS Trademarks.

This Panel therefore finds that the domain name in dispute was registered in bad faith by Gregory A. Ricks and was acquired in bad faith by the Respondent.

Paragraph 4(b) of the Policy states a non-exclusive list of factors that constitute evidence of fad faith use. In particular, paragraph 4(b)(iv) includes use of the domain name intentionally to attract users for commercial gain. This paragraph is directly applicable to the present situation.

Relying on the evidence adduced by the Complainant and the decisions cited in support of its representations which this Panel adopts, this Panel has no difficulty in finding that the Respondent took advantage of the fame and goodwill associated with Complainant’s Trademarks by capitalizing on Internet users’ familiarity with the VIRGINIA SLIMS Trademarks in its use of using the domain name in dispute to lead Internet users to the Respondent’s website and thereby link to other websites selling smoking cessation products. This is clearly evidence of the intention by the Respondent to attract Internet users for his commercial gain.

There is no need to consider and determine if the other grounds advanced by the Complainant to justify a finding of use of the domain name in bad faith by the Respondent. Again, the Respondent was notified of Complainant’s representations and grounds of such improper use of the domain name for commercial gain and has not offered any evidence to the contrary.

This Panel finds that the domain name in dispute has been registered and used in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain name <virginiaslims.com> is confusingly similar to the Complainant’s VIRGINIA SLIMS Trademarks;

(b) the Respondent has no rights or legitimate interest in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <virginiaslims.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: March 24, 2005