Complainant is Altria Group, Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter, United States of America.
Respondent is Steven Company of Deerfield Beach, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2010. On October 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 19, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2010.
The Center appointed Seth M. Reiss as the sole panelist in this matter on December 7, 2010. 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
Complainant is the parent company of Philip Morris USA Inc., John Middleton Co., and U.S. Smokeless Tobacco Company LLC, leaders in the American tobacco industry. Complainant claims to have used the ALTRIA service mark in commerce from January 2003. Complainant uses the ALTRIA service mark extensively in connection with conducting shareholder and investor relations, administering employee benefit and pension plans and sponsoring numerous charitable organizations. Complainant states it has invested large sums of money to promote and develop its ALTRIA mark through print media and the Internet, and Complainant maintains a company website at “”.
Complainant registered its ALTRIA mark for services with the United States Patent and Trademark Office. These registrations date from 2005.
According to the WhoIs database, the disputed domain name was first registered on May 27, 2007, and is presently registered to Respondent.
On July 29, 2010, Complainant wrote Respondent requesting that Respondent cease using the ALTRIA mark or any other confusingly similar names or marks, and immediately transfer all rights in the disputed domain name to Complainant. Respondent did not reply to Complainant’s communication. Subsequently, according to Complainant, the disputed domain name ceased resolving to an active website. Instead, as of the date of the Complaint and continuing until the time of this Panel’s preparation of this decision,1 the disputed domain name re-directs Internet users to a website for “Tame-Bull” tea products, a non-caffeinated health drink touted as having anti-aging and antibacterial qualities that is offered for sale to those visiting the site.
Respondent has no connection to Complainant and has not been authorized by Complainant to use the ALTRIA mark. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name is confusingly similar to Complainant’s ALTRIA mark in which it has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith.
Complainant requests that this Panel order that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles that 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 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
Panels agree that “[i]f the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.1. Other UDRP panels have acknowledged that Complainant has established rights in the ALTRIA mark through registration and use. See Altria Group, Inc. v. Cheng, WIPO Case. No. D2009-1764; and Altria Group, Inc. v. Mark Orice,WIPO Case No. D2006-1478.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s ALTRIA mark because: it incorporates the Mark in its entirety, America Online, Inc. v. , NAF Claim No. FA117319; because it combines Complainant’s mark with a generic or descriptive term, Sanofi-Aventis v. EDF RTD, Nathaniel HO, WIPO Case. No. D2009-1398 (“[t]he mere addition of the descriptive word ‘buy’ to a trade mark is insufficient to avoid confusing similarity”); and because the addition of a top level domain name ending fails to distinguish an otherwise confusingly similar domain name from a mark in regard to which rights have been established, Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029.
The first element of the Policy is thus established. B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative by requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1.
Complainant states that Respondent is in no way connected, affiliated or associated with Complainant, and that Respondent has not been authorized by Complainant to use its ALTRIA mark. The Panel considers ALTRIA mark is fanciful. There does not appear to be anything in the record or on the web pages pointed to by the disputed domain name to indicate that: Respondent is known by the disputed domain name, that Respondent is using the disputed domain name in conjunction with a bona fide offering of goods or that Respondent is making a legitimate, non-commercial fair use of the disputed domain name.
This Panel is entitled to draw negative inferences from Respondent’s default. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.6. A negative inference is particularly appropriate here, in regards to a respondent’s burden, under this second element of the Policy, where Respondent has failed to establish some right or legitimate interest in respect of the disputed domain name following the Complainant making out a prima facie case of Respondent being without such a right or interest.2
The second element of the Policy is thus established. C. Registered and Used in Bad Faith
The fanciful and distinctive nature of the ALTRIA mark; its widespread use and recognition; and its use in the disputed domain name together with the generic word “buy”; as well as Respondent’s use of the disputed domain name to point Internet users to a commercial website that contains no reference to the word “altria” or to anything even remotely connected to the ALTRIA mark or the Complainant, compels this Panel to conclude that Respondent registered and is using the disputed domain name to “intentionally attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with [Complainant’s ALTRIA mark] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] website.” Policy, paragraph 4(b)(iv).
The third element of the Policy, that Respondent registered and is using the disputed domain name in bad faith, is thus established. 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 Complainant.
Seth M. Reiss
Sole Panelist
Dated: December 19, 2010
1 “A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5.
2 While the three year delay between the registration of the disputed domain and the commencement of this UDRP proceeding could be relevant to the issue of a respondent’s rights or legitimate interests, there is nothing in the record here to indicate that it should be in this case.
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