Complainants are Altria Group, Inc. (“Altria Group”) and Altria Group Distribution Company (“Altria Distribution”; and with Altria Group, collectively, “Complainant”), United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is SyedJ Hussain, IBN7 Media Group, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 2019. The Center verified that the Complaint together with the amended 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 December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on December 27, 2019. The Center appointed Scott R. Austin as the sole panelist in this matter on January 15, 2020. 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 states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support: 1) that, Altria Group “is the parent company of four tobacco operating companies”, including “Philip Morris USA Inc., the manufacturer of MARLBORO cigarettes, the leading brand of cigarettes in the United States;” 2) that “Altria Group has continuously used its ALTRIA trade name and trademark [(the “ALTRIA Mark”)] in interstate commerce for numerous years as the owner of the [listed] tobacco product operating companies”; 3) that “Altria Group owns the [ 4) that “Altria Group offers a number of services under its [ALTRIA Mark], including charitable services such as providing scholarships, various financial services, and providing information about underage tobacco prevention and tobacco issues” and “also provides tobacco production distribution, sales, and consumer engagement and related services in the field of tobacco products under and in connection with the [ALTRIA Mark];” 5) that Altria Group owns either directly or through its subsidiary, Altria Distribution, a number of trademark registrations, including, but not limited to, the following: a) United States Trademark Registration No. 3,029,629, ALTRIA, registered to Altria Group on December 13, 2005, claiming a first use date at least as early as January 27, 2003 for among other things, financial services in International Class 36 and for “charitable and philanthropic services, namely providing food clothing, shelter” in International Class 42; b) United States Trademark Registration No. 3,073,900, , registered to Altria Group on March 28, 2006, claiming a first use date at least as early as January 27, 2003 for among other things, financial services in International Class 36 and for “charitable and philanthropic services, namely providing food clothing, shelter” in International Class 42; c) United States Trademark Registration No. 4,815,825, ALTRIA, registered to Altria Distribution on September 22, 2015, for “distributorship services in the field of tobacco products; consumer engagement services in the nature of in-store product display arrangement services in the field of tobacco products” in International Class 35; and d) United States Trademark Registration No. 4,820,612,, registered to Altria Distribution on September 29, 2015, for “distributorship services in the field of tobacco products; consumer engagement services in the nature of in-store product display arrangement services in the field of tobacco products” in International Class 35. 6) that the disputed domain name was registered by Respondent on August 28, 2019 and at the time of filing, resolved to “to a website featuring links to third-party websites” including, “the link “Marlboro Price,” which is a direct reference Complainant and its business.” 5. Parties’ Contentions A. Complainant 1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because: a) By virtue of its federal trademark and service mark registrations as shown in the Annex to its Complaint, Complainant is the owner of trademark rights in the ALTRIA Mark, including, but not limited to, the rights represented by the registrations referenced under Section 4 above; b) “It is standard practice when comparing a Disputed Domain Name to Complainant’s trademark, to not take the extension into account.”; c) “In creating the Disputed Domain Name, Respondent has added the acronym “pmi” [which stands for] (Philip Morris International, Inc.) to Complainant’s ALTRIA trademark, thereby making the Disputed Domain Name confusingly similar to Complainant’s trademark.”; d) Until a spin-off in 2008, Philip Morris International, Inc. (“PMI”) “was an operating company of Complainant” and on August 27, 2018, [the day before registration of the disputed domain name] “Complainant confirmed discussion with PMI regarding a potential merger”, but “[the merger] discussion ended on September 25, 2019.” e) “The fact that such acronym is closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant’s trademark.”; and f) “[A] disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.” 2) Respondent has no rights or legitimate interests in the disputed domain name because: a) “Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests;” b) “Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademark, including in domain names”; c) “In the instant case, the pertinent Whois information identifies the Registrant as “REDACTED FOR PRIVACY.” However, upon verification with the relevant registrar, the Registrant has been identified as “SyedJ Hussain, IBN7 Media Group”, which does not resemble the Disputed Domain Name in any manner”: d) “Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites” for which “Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name’s website”; and e) “Respondent registered the Disputed Domain Name on August 28, 2019, which is significantly after Complainant filed for registration of its [ALTRIA Mark] with the United States Patent and Trademark Office (USPTO), and also significantly after Complainant’s first use in commerce of its trademark on January 27, 2003”. 3) The disputed domain name has been registered and is being used in bad faith because: a) “Complainant and its ALTRIA trademark are well-known, with numerous trademark registrations in the United States and internationally”; b) “By registering a domain name that incorporates Complainant’s [ALTRIA Mark] with the addition of the pre-fix “pmi” (an acronym standing for “Philip Morris International”), Respondent has created a domain name […] specifically targeting Complainant”; c) “In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered”; d) “Respondent’s registration of the Disputed Domain Name a day after Complainant confirmed that a merger with PMI was in discussion strongly suggests that Respondent knew of Complainant and only registered the Disputed Domain Name in response to the publicity generated and received by Complainant.”; e) “By creating this likelihood of confusion between the Complainant’s trademark and the Disputed Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademark in order to increase traffic to the Disputed Domain Name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website, one of which directly references Complainants brand and business.”; and f) “The Disputed Domain Name can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy, [paragraph] 4(b)(iv), with no good faith use possible.” B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registrations cited by Complainant, as well as supporting documents submitted as evidence and the decisions of prior UDRP panels, the Panel finds that Complainant has established trademark rights in and to its well-known ALTRIA Mark used by Complainant in connection with the respective services identified in Section 4 above. See, e.g., Altria Group, Inc. and Altria Group Distribution Company v. Domain Administrator, See PrivacyGuardian.org,WIPO Case No. D2019-2057 (“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”; providing transfer of Complainant contends, inter alia, that the disputed domain name is confusingly similar to its ALTRIA Mark in which Complainant has rights because in creating the disputed domain name, Respondent has added the acronym “pmi”, to Complainant’s ALTRIA Mark, which acronym stands for Philip Morris International, Inc., an operating company of Complainant until it was spun off in 2008 and the subject of recent merger discussions with Complainant, thereby making the disputed domain name confusingly similar to Complainant’s trademark. Complainant further contends, “[t]he fact that such acronym is closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant’s trademark.” For the disputed domain name to be found identical or confusingly similar to the ALTRIA Mark, the relevant comparison is with the second-level portion “pmialtria” of the disputed domain name, Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANA,WIPO Case No. D2018-1138 (panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and the disputed domain name Prior UDRP panels have held, however, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 (The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.) The Panel agrees and notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” One UDRP panelist, citing section 1.7 of the WIPO Overview 3.0 in a recent decision under the Policy, noted: “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue”, Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633. Complainant’s ALTRIA Mark is readily recognizable as incorporated in its entirety into the disputed domain name here and for that reason this Panel finds the disputed domain name confusingly similar to the ALTRIA Mark in which Complainant has rights. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under this second element of the Policy, 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, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1. See also, Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain name. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: a) “Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademark, including in domain names”. b) “Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests;” c) “In the instant case, the pertinent Whois information identifies the Registrant as “REDACTED FOR PRIVACY.” However, upon verification with the relevant registrar, the Registrant has been identified as “SyedJ Hussain, IBN7 Media Group,” which does not resemble the Disputed Domain Name in any manner”. Complainant argues that Respondent has no rights or legitimate Interests in the disputed domain name, stating, without challenge by Respondent, that Respondent has no license right or other authorization from Complainant “to use Complainant’s trademark, including in domain names”. Prior panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA,WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”). Complainant submitted evidence initially showing Respondent’s name in the pertinent WhoIs information as “REDACTED FOR PRIVACY,” which does not resemble the disputed domain name in any manner. The record shows that ultimately upon verification with the relevant Registrar, the name “SyedJ Hussain, IBN7 Media Group” was revealed as the Registrant, which name likewise bears no resemblance to the disputed domain name. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been commonly known by the disputed domain name. The Panel finds in review of the WhoIs record and other evidence submitted by Complainant that Respondent is not commonly known by the disputed domain name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (Respondent’s name “Bestinfo” cannot be commonly known by domain name It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). The Panel has found above that the disputed domain name is confusingly similar to Complainant’s ALTRIA Mark. The Panel accepts Complainant’s contentions that Respondent is not commonly known by the disputed domain name and that Respondent has never been authorized by Complainant to use Complainant’s ALTRIA Mark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name. It remains for the Panel to determine whether there is evidence for Respondent to rebut Complainant’s prima facie case to show that it has rights or legitimate interests in the disputed domain name. Complainant has submitted evidence in the record to support its contention that the disputed domain name at the time of filing the Complaint, was being used “to redirect internet users to a website featuring links to third-party websites” for which “Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name’s website”. For example, Complainant has shown in the Annexes attached to its Complaint, inter alia, that Respondent’s website accessed through the disputed domain name features the link “Marlboro Price,” which is a direct reference to Complainant and its business. Prior UDRP panels have consistently held that respondents that monetize domain names using pay-per-click links, targeting the complainant, have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name and, therefore, “Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy. [paragraph] 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, [paragraph] 4(c)(iii).” Section 2.9 of WIPO Overview 3.0 provides: “[P]anels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” See, e.g.,Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415(“when the links on the PPC landing page “are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting.”); Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353. The Panel agrees with Complainant and finds that the actions taken by Respondent and links promoted through its website accessed through the disputed domain name do not confer rights or legitimate interests on Respondent. Considering all of the circumstances, 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 argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). The Panel finds that Respondent has registered the disputed domain name in bad faith for at least the following reasons. Complainant contends that Respondent’s composition of the disputed domain name, incorporating Complainant’s ALTRIA Mark in its entirety appended with the prefix “pmi”, the acronym for Complainant’s former operating company “Philip Morris International” makes it illogical to believe that Respondent registered the disputed domain name without specifically targeting Complainant and its mark in bad faith. The Panel agrees and finds as one prior UDRP panel did, that where a domain name such as the disputed domain name here is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226. Given that the disputed domain name is so obviously connected with Complainant and Complainant’s established rights in its ALTRIA Mark through its use of the ALTRIA Mark for more than 16 years as shown in the evidence submitted by Complainant, the Panel finds that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. See Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492. The Panel also notes the evidence submitted by Complainant establishes that Respondent registered the disputed domain name “a day after Complainant confirmed that a merger with PMI was in discussion”. The Panel agrees with Complainant that this evidence “strongly suggests that Respondent knew of Complainant and only registered the Disputed Domain Name in response to the publicity generated and received by Complainant.” Previous UDRP panels have held that registration of a domain name related to and shortly after an announcement or event by a complainant constitutes opportunistic bad faith registration. See Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A.,WIPO Case No. D2001-0351 (finding that the respondent’s registration of the Given these circumstances, the Panel finds that Respondent could not plausibly argue that he did not have knowledge of Complainant’s ALTRIA Mark at the time he registered the disputed domain name on August 28, 2019, and like prior UDRP panels, this Panel is convinced that Respondent was well aware of Complainant’s mark when it registered the disputed domain name and did so in bad faith. The Panel also finds that Respondent’s use of the disputed domain name is in bad faith. Based on the website to which the disputed domain name resolves, as discussed in detail under Section 6B above, Complainant submits that prior UDRP panels have found bad faith registration and use under Policy paragraph 4(b)(iv) where, as here. a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). In light of the long history of Complainant’s trademarks and Complainant’s significant renown and brand recognition in the United States, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s mark and by incorporating it in its entirety into the disputed domain name, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion he created between the disputed domain name and the ALTRIA Mark. See Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850. The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 Scott R. Austin
Sole Panelist
Date: January 29, 2020
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