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and Mediation Center
Philip Morris Products S.A. v. LaPorte Holdings
Case No. D2006-0012
1. The Parties
The Complainant is Philip Morris Products S.A., Neuchвtel, Switzerland, represented by Schellenberg Wittmer, Switzerland.
The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pmicareer.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2006. On January 5, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On January 6, 2006, NameKing.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 January 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2006.
The Center appointed Josй Mota Maia as the Sole Panelist
in this matter on February 27, 2006. 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,
4. Factual Background
The Complainant does not have a registered trademark or service mark for PMI. The Complainant submits that he’s the owner of a common law trademark for PMI.
The letters PMI are an acronym for Philip Morris International.
5. Parties’ Contentions
The Complainant submits that the acronym PMI has become a distinctive identifier associated with Philip Morris International and its goods and services.
The Complainant owns the domain name <pmicareers.com>, which was registered on May 22, 2001.
The disputed domain name is confusingly similar to the unregistered trademark PMI because the adding of a generic term such as “career” to the identical mark PMI does not avoid a confusing similarity.
The Complainant owns trademark registrations for the acronym PM.
The Complainant owns, in the Benelux, a trademark registration of the word PMICAREERS.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered and is using the domain name in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the Complainant must prove each of the following:
(1) that 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
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the unregistered trademark PMI, the trademarks PM and the trademark PMICAREERS, registered in the Benelux.
With regard to the latter, it is important to stress that the trademark application
in the Benelux was filed after the domain name was registered. The same applies
to the Swiss trademark PM. However, paragraph 4(a)(i) does not require that
the trademark be registered prior to the domain name. This may be relevant to
the assessment of bad faith pursuant to paragraph 4(a)(iii), which is considered
below. See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO
Case No. D2001-0827. The Panel concludes therefore that the Complainant
has satisfied the first requirement of paragraph 4(a)(i). As to the second requirement,
the domain name is identical to the trademark “PMICARREERS”, except
regarding the final “s”.
The Complainant has therefore shown that it has trademark rights. It has also shown that the domain name is confusingly similar to these trademarks.
The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
By examining the facts of a number of cases in which the Respondent has been
found not to have a legitimate interest and to have registered and used a large
number of domain names in bad faith, it is possible to detect a pattern of conduct
on the part of the Respondent consisting of systematically registering domain
names containing third-party trademarks without any right or authorization whatsoever,
for the purpose of attracting hits to its sites by using the goodwill of the
trademarks involved, so that it can collect affiliate credits through the links
it provides. See Wal-Mart Stores, Inc. v. Henry Chan, WIPO
Case No. D2004-0056.
There is no evidence in the case file supporting a finding of rights or legitimate interests and the Respondent has not rebutted any of the Complainants assertions and evidence. Accordingly, this Panel concludes that the Complainant has proved the second limb of the Policy.
C. Registered and Used in Bad Faith
The Panel supports that bad faith use on its own is not enough. The Policy calls for bad faith registration as well as bad faith use. For the purposes of the Policy, a good faith registration cannot be converted into a bad faith registration simply by virtue of a subsequent bad faith use.
It is obvious from the evidence in the case file that the Respondent has registered
and is using the domain name to intentionally attract, for commercial gain,
internet users to the said website, by creating a likelihood of confusion with
the Complainant’s mark and the job recruiting services of the Complainant,
provided by the Complainant in its website “www.pmicareers.com”.
See Total S.A. v. LaPorte Holdings, WIPO
Case No. D2005-0483. The Respondent is also engaged in the business of registering
domain names consisting of others’ trademarks. This shows a pattern of
bad faith conduct.
The Panel concludes that the Complainant has succeeded in proving the three
elements within paragraph 4(a) of the Policy.
For all the foregoing reasons, the Panel orders that the domain name <pmicareer.com> be transferred to the Complainant.
Josй Mota Maia
Dated: March 31, 2006