WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altria Group, Inc v. Mark Orice
Case No. D2006-1478
1. The Parties
The Complainant is Altria Group, Inc., United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Mark Orice, Madrid, Spain.1
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2006. On November 20, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 23, 2006, eNom 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 November 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2006.
The Center appointed William R. Towns as the sole panelist in this matter on January�19, 2007. 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 is the parent company of Philip Morris USA Inc. and Philip Morris International, Inc., and Kraft Foods, Inc., 2 among other entities. The Complainant obtained registrations from the United States Patent and Trademark Office (“USPTO”) for the ALTRIA mark and ALTRIA design mark (including a multicolor mosaic design), on December 13, 2005 and March 28, 2006, respectively, and has used the ALTRIA marks in commerce in the United States since January 27, 2003. The Complainant also has registered the domain name , which resolves to the Complainant’s website, in addition to the registration of a number of other domain names incorporating its ALTRIA mark.
The Respondent registered the disputed domain name on August��11,�2006. The Respondent has used the domain name to direct Internet users to a website that offers escrow services for online transactions. Among other things, the Respondent’s website includes a picture montage copied from the Complainant’s website, and the Respondent’s website displays the Complainant’s ALTRIA mark and ALTRIA design mark (collectively the “ALTRIA Marks”).
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its ALTRIA Marks and incorporates the Complainant’s mark in its entirety. The Complainant disputes that the Respondent has rights or legitimate interests in the disputed domain name, asserting that the Respondent has never been commonly known by the domain name, and further asserting that the Respondent is not making a legitimate use of the domain name. According to the Complainant, ALTRIA is a fanciful mark, and the Respondent’s incorporation of the mark into the disputed domain name cannot be happenstance. The misappropriation of the Complainant’s marks is further evidenced by the Respondent’s use of the Complainant’s pictures and the ALTRIA Marks (including the multicolor mosaic design), copied directly from the Complainant’s official website.
The Complainant maintains that the Respondent has registered the disputed domain name in bad faith because he did so with knowledge of the Complainant’s rights in the ALTRIA Marks. The Complainant asserts that the Respondent is using the domain name in bad faith to divert Internet users to a website replicating the look and feel of the Complainant’s official website, in an attempt to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services on the website. The Complainant further points to the Respondent’s provision of false contact information when registering the disputed domain name as an indication of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v.. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 and 170. Paragraph�15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a) of the Policy, a number of panels have concluded that in relation to paragraph�4(c) of the Policy, the burden shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s ALTRIA Marks for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the relevant marks through registration and use, and the disputed domain name incorporates the Complainant’s ALTRIA word mark in its entirety. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Caf�, WIPO Case No. D2000-0068.
Upon direct examination, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. The addition of the prefix “eu” ( a common reference to the European Union), does nothing to dispel such confusion. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy
C. Rights or Legitimate Interests
As the Complaint convincingly reflects, no affiliation exists between the Complainant and the Respondent, and the Complainant has not authorized or licensed the Respondent to use the Complainant’s ALTRIA marks or to register domain names reflecting the Complainant’s marks. The disputed domain name incorporates the Complainant’s ALTRIA mark in its entirety, and the Respondent’s website attempts to replicate the look and feel of the Complainant’s website, including the copying of images and the use of the ALTRIA Marks and multicolor mosaic design.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph�4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.3 Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel has examined the record for circumstances that might support a claim by the Respondent of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel has found none. While the record arguably reflects the Respondent’s use of the disputed domain name, prior to receiving any notice of this dispute, to direct Internet users to a website offering escrow services, such use without more does not bring the Respondent within the safe harbor provision of paragraph 4(c)(i). It is well settled under the Policy that for an offering under paragraph 4(c)(i) to be considered bona fide, the domain name use must be in good faith under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No.�D2000-1840.
The circumstances of this case dispel any reasonable doubt that the Respondent deliberately registered a domain name incorporating the Complainant’s mark, with the intent to use the domain name to exploit and profit from the good will established in the Complainant’s mark. The Respondent has used of the domain name direct Internet users to a website replicating the look and feel of the Complainant’s website, including copying images from the Complainant’s website and using the Complainant’s ALTRIA marks. This does not constitute a good faith use of the domain name under the Policy. To the contrary, as noted in Research In Motion Limited v. Dustin Picov, WIPO Case No.�D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”.
Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230.
As discussed above, the Panel concludes that the Respondent intentionally registered the disputed domain name to appropriate the Complainant’s ALTRIA Marks for his own use. The Respondent then used the domain name to lure Internet users to a website, replicating the look and feel of the Complainant’s official website presumably, in order to exploit and profit from the goodwill and reputation of the Complainant’s marks. The record amply supports the conclusion that the Respondent registered the disputed domain name in bad faith, and that the Respondent is making a bad faith use of the domain name under paragraph 4(b)(iv) of the Policy, attempting to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Accordingly, the Panel finds that the Complainant has met its burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: February 2, 2007
1 The Respondent appears to have provided false contact information to eNom when registering the disputed domain name, including the following postal address: “Calle Pablo, 4, Madrid, MA, 28820,United States”. The zip code “28820” does not exist in the United States, and the United States Postal Service does not have a “Madrid, Massachusetts” in its electronic database. Conversely, the Respondent’s website provides the following contact address: “Calle Atocha, n. 37, Madrid, 28012, Spain”.
2 The Complainant’s website reports that on January 31, 2007, the Complainant’s Board of Directors voted to spin off all of the Complainant’s shares in Kraft Feed to the Complainant’s shareholders.
3 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No.�D2000-0403.
Full & Egal Universal Law Academy