Complainants are Altria Group, Inc. (“Complainant 1”) and Altria Group Distribution Company (“Complainant 2”), United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden. Together Complainants 1 and 2 will be hereinafter collectively referred to as “Complainant”.
Respondent is Domain Administrator, See PrivacyG, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 27, 2019. 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 1 is the parent company of four tobacco operating companies, including Philip Morris USA Inc. Complainant 1 is the manufacturer of cigarettes under the MARLBORO brand name. In addition to Complainant 1’s longstanding common law trade name and trademark rights in its ALTRIA trade name and mark, it owns United States Reg. Nos. 3,029,629, and 3,073,900, registered December 13, 2005 and March 28, 2006, respectively, for the marks ALTRIA, and ALTRIA & Design in connection with charitable, financial, and philanthropic services.
Complainant 1 is also the parent company of Complainant 2. Since at least as early as 2003, Complainant 2 has provided tobacco product distribution services and consumer engagement services in the field of tobacco products under the ALTRIA trademark and owns United States Reg. Nos. 4,815,825 and 4,820,612 for ALTRIA, and ALTRIA & Design, registered September 22, 2015 and September 29, 2015, respectively. The aforementioned trademarks will hereinafter be referred to as the “ALTRIA Mark”.
Complainant 1 has continuously used its ALTRIA Mark in interstate commerce for numerous years as the owner of the above-referenced tobacco product operating companies. Complainant 1 owns the and domain names and operates a website at “www.” that provides information about Complainant 1 and its operating companies, among other things, as well as “ www.”, which provides information regarding its benefit plans to its employees.
Respondent registered the Disputed Domain Name on July 8, 2019, significantly after Complainant filed for registration of its ALTRIA Mark with the United States Patent and Trademark Office (the “USPTO”), and also significantly after Complainant’s first use in commerce of its ALTRIA Mark on January 27, 2003. Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites for Employee Benefits, HR Management, Employment and Incentives. 5. Parties’ Contentions A. Complainant
The following are Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to Complainant’s ALTRIA Mark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant seeks the transfer of the Disputed Domain Name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order for Complainant to prevail and have the Disputed Domain Name transferred to Complainant, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the Disputed Domain Name is confusingly similar to the ALTRIA Mark as set forth below.
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the ALTRIA Mark based on longstanding use as well as its trademark registrations for the ALTRIA Mark in the United States. The Disputed Domain Name consists of the ALTRIA Mark in its entirety along with the descriptive terms “total reward”, followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or dictionary word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
Moreover, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, a respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the disputed domain name. If a respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Complainant has not authorized, licensed, or otherwise permitted Respondent to use its ALTRIA Mark. Complainant does not have any business relationship with Respondent, nor is Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that Respondent is improperly using the Disputed Domain Name for commercial gain. Respondent registered the Disputed Domain Name in an attempt to appear associated or affiliated with Complainant. Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites for Employee Benefits, HR Management, Employment and Incentives. These links are related to Complainant’s domain name which resolves to Complainant’s website “www.” and where Complainant’s employees can find information regarding Complainant’s benefit plans. The domain name owned by Complainant 1 is almost identical to the Disputed Domain Name, , with the only variation being an extra “s” in Complainant 1’s domain name. While not strictly an example of cybersquatting, it is no coincidence that Respondent chose this Disputed Domain Name that is almost identical to Complaint’s domain name and ALTRIA Mark.
It is possible that Respondent receives pay-per-click fees from the linked websites that are listed on the Disputed Domain Name’s website. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name, where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. This is especially true where, as in the present case where Complainant offers a rewards program for its employees, the descriptive words “total reward” is associated with Complainant and its benefits plan.1 See, e.g., AARP v. Anthony Lauberth,WIPO Case No. D2017-0155 (it is not possible to conceive of any plausible use of the domain name by the respondent that would be legitimate).
Thus, Respondent did not use or have an intention to use the Disputed Domain Name in connection with a bona fide offering of goods or services and has no rights or legitimate interests in the Disputed Domain Name.
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), that respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not submitted any substantive arguments or evidence to rebut Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, Respondent attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s ALTRIA Mark. The page to which the Disputed Domain Name resolves contains hyperlinks that are pay-per-click sponsored ads that has information about employee benefits. As such, Respondent is not only trading on consumer interest in Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but Respondent also derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC,WIPO Case No. D2006‑1128. Further, when the links on pay-per-click pages are based on the trademark value of a domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See,e.g., Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006 (pay‑per-click landing page not legitimate where ads are keyed to the trademark value of the domain name).
Second, bad faith may be found where Respondent knew or should have known of Complainant’s ALTRIA Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which Respondent registered the Disputed Domain Name long after Complainant first used and registered the ALTRIA Mark. The continuous and public use of the ALTRIA Mark would make it disingenuous for Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with Complainant’s rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after complainant established rights and publicity in complainant’s trademarks). Thus, the timing of Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith. Moreover, the Panel concludes that it is more likely than not that Respondent had the ALTRIA Mark in mind when registering the Disputed Domain Name.
Third, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be suggestive of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the ALTRIA Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Date: October 8, 2019
1 In addition to the employee benefit plan at “www.”, Complainant’s subsidiary, Philip Morris USA launched the Marlboro’s Points West rewards program in Texas in 2017, where adult smokers 21 and older can earn points by scanning unique codes printed on their Marlboro packs, and redeem those points for gear, coupons and charitable donations. The Marlboro Rewards program was launched nationally in the United States in January 2019.
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