Tobacco company convinces arbitration panelist to hand over domain names used to criticize it.
Philip Morris has won another cybersquatting complaint against a long time nemesis.
The company convinced a single member National Arbitration Forum panelist that David Delman should hand over six domain names he used as gripe sites about smoking: philipmorris.website, philipmorrisviolations.website, philipmorriscigarettediseases.org, philipmorriscigaretteskill.com, philipmorriscigarettescankill.com and philipmorriscigarettediseases.com.
The tobacco company has previously won seven cybersquatting complaints against this same person. Yet panelist Katalin Szamosi turned in a shoddy reasoning to the case, regardless of whether you think Philip Morris should have won or not.
Philip Morris had to prove that the domain names were confusingly similar to its marks. Typically in gripe site cases, the panel will consider if someone seeing the domain name would think it was controlled by the trademark holder or not. Obviously, Philip Morris is unlikely to create a site called PhilipMorrisCigarettesKill.com, so it normally wouldn’t pass the test.
But Szamosi wrote:
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)).
Yes, merely adding a generic or descriptive word doesn’t alleviate confusing similarity. But panels have found that adding a negative word, such as “sucks”, certainly does. The only site that could confuse someone before they view it is PhilipMorris.website.
On the issue or Rights or Legitimate interest, the panelist wrote:
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.
Although not always, panels will generally find it is acceptable to register domain names like this, especially ones with negative modifiers, to criticize a company. This is especially the case when both the complainant and respondent are in the U.S.
It begs the question, why did NAF appoint a panelist from Hungary for this case?
To be fair to Szamosi, finding for the respondent would have meant going against decisions in many previous cases. It’s easier to just go with the flow. But a panelist shouldn’t cite irrelevant cases as examples.