Complainants are Altria Group, Inc., United States of America (“United States”); Altria Group Distribution Company, United States; and Philip Morris USA Inc., United States, collectively represented by CSC Digital Brand Services AB, Sweden.
Respondent is Brandon Bomberg, Twin Cities Holdings, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 15, 2020, 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 February 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 18, 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 Complainants in this proceeding are Altria Group Inc. (“First Complainant”), Altria Group Distribution Company (“Second Complainant”), and Philip Morris USA Inc. (“Third Complainant”) (collectively “Complainants”). First Complainant is the parent company of a number of tobacco operating companies that manufacture and sell cigarette and cigar brands such as MARLBORO, SKOAL, COPENHAGEN, and BLACK & MILD. First Complainant is the owner of numerous registrations for the ALTRIA trademark, including United States registration numbers 3029629 and 3073900, which were registered on December 13, 2005, and March 28, 2006, respectively, and First Complainant has been using the trademark since at least January 27, 2003. It also owns and operates the Second Complainant is a subsidiary for First Complainant. Second Complainant has provided tobacco product distribution services and consumer engagement services in the field of tobacco products under the ALTRIA trademark. Second Complainant owns United States registration numbers 4815825 and 4820612 for the ALTRIA trademark, which were registered on September 22, 2015 and September 29, 2015, respectively. Third Complainant is a corporation organized and existing under the laws of the Commonwealth of Virginia. It has used the PHILIP MORRIS designation throughout the United States for over a century, which has become uniquely associated with its tobacco products sold under such trademarks as MARLBORO and BENSON & HEDGES. According to the 2018 Annual Report filed by First Complainant with the Securities and Exchange Commission, Third Complainant’s net revenues were in excess of USD 22 billion. Third Complainant has also registered several Internet domain names incorporating the PHILIP MORRIS designation, including Respondent registered all of the disputed domain names on December 11, 2019, long after the registration of the ALTRIA trademarks, use of the PHILIP MORRIS designation, and registration of the Complainants contend that the disputed domain names are confusingly similar to their ALTRIA and PHILIP MORRIS trademarks because they reproduce identically and entirely these marks. They also allege that they never authorized Respondent to use any of Complainants’ trademarks or to register any domain name containing the ALTRIA and PHILIP MORRIS trademarks. They also assert that Respondent has no rights or legitimate interest in the disputed domain names because he is not commonly known by the disputed domain names and there is no evidence of him using or having made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services, or in connection with a legitimate noncommercial or fair use. Lastly, Complainants’ allege that Respondent’s registration and use of the disputed domain names were in bad faith because they completely incorporate Complainants’ ALTRIA and PHILIP MORRIS trademarks and have no other conceivable use except creating a form of initial interest confusion to divert Internet users from Complainants’ true websites to Respondent’s website. Moreover, Complainants provide evidence that Respondent has engaged in a pattern of bad faith registration and use of domain names, including not only Complainant’s well-known trademarks, but also the well-known trademarks of third parties. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, UDRP panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Complainants have provided clear evidence that Respondent is the registrant for all the disputed domain names that incorporate Complainants’ brands. This denotes a common conduct affecting all Complainants in a similar fashion thus justifying joining Complainants and the disputed domain names in this sole proceeding. Furthermore, in the circumstances of this case it would be equitable and procedurally efficient to permit the consolidation. Under paragraph 4(a) of the Policy, to succeed, Complainants must satisfy the Panel that: (i) the disputed domain names are 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 names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, section 4.3 of the WIPO Overview 3.0 states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainants’ contentions, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. WIPO Overview 3.0, section 1.3; see also Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (“[…] the Panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark and service mark rights may be […]”). Complainants have provided evidence that they have rights in the ALTRIA trademark through their United States registrations and in the PHILIP MORRIS trademark through the evidence submitted showing the duration and nature of use of the mark, the degree of actual media attention, and the sales under the mark. With Complainants’ rights in the ALTRIA and PHILIP MORRIS marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top‑Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainants’ marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. UDRP panels have consistently held that 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. See Inter IKEA Systems B.V. v. Franklin Lavalle / IkeaCuisine.net,WIPO Case No. D2015-2042. Furthermore, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8; see also, e.g., Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen,WIPO Case No. D2015-2353; Stefani Germanotta and Ate My Heart Inc. v. Rola Dowens,WIPO Case No. D2013-1506. Here, Complainants’ ALTRIA and PHILIP MORRIS marks are fully incorporated in all of the disputed domain names. The inclusion of various descriptive terms such as “international” in some of the disputed domain names does not prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainants’ ALTRIA and PHILIP MORRIS trademarks, as the case may be. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, Complainants alleged that they have never authorized Respondent to use any of Complainants’ trademarks or to register any domain name containing the trademarks ALTRIA or PHILIP MORRIS. They have also noted that none of the disputed domain names reflect Respondent’s name and that there is no evidence that he is commonly known by the disputed domain names. Complainants have also established rights to their ALTRIA and PHILIP MORRIS trademarks and that they were already famous prior to the registration of all the disputed domain names, meaning that Respondent should have been aware of them at the time it registered the disputed domain names. Lastly, Complainants alleged that Respondent has not demonstrated any attempt to make legitimate use of the disputed domain names, since Respondent is using them to redirect Internet users to the website “www.twincitiesinc.net”, which as evidenced in the Complaint resolves to a blank page with no content. UDRP panels have found that a respondent’s use of a complainant’s mark to redirect users to an inactive website would not support a claim to rights or legitimate interests. See, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on Respondent to produce evidence to rebut this presumption. Pierre Fabre Dermo-Cosmetique v. Simon Chen/personal/jinpingguo,WIPO Case No. D2011-0769, citing Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; see also Hermes International, SCA v. cui zhenhu,WIPO Case No. D2010-1743. Respondent failed to respond to these allegations or produce any evidence to refute them. The Panel therefore finds that Complainants have established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent registered and used the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Complainants provided ample evidence showing the widespread use and numerous registrations for the ALTRIA trademark as well as long-standing use of the PHILIP MORRIS trademark, both of which long predate the registration of the disputed domain names by Respondent. Therefore, Respondent was likely aware of the ALTRIA and PHILIP MORRIS trademarks when it registered the disputed domain names, or knew or should have known that the disputed domain names were identical or confusingly similar to Complainants’ marks. SeeWIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Patterns of bad faith have been found by UDRP panels when the respondent registered, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. WIPO Overview 3.0, section 3.1.2; see also Salvatore Ferragamo S.p.A v. Ying Cho,WIPO Case No. D2013-2034. Thus, here, Complainants have shown that Respondent has acted in bad faith through its registration of the numerous disputed domain names, all incorporating Complainants’ marks. Furthermore, Complainants provide evidence that Respondent has engaged in a pattern of bad faith registration of well‑known trademarks of various third parties. Thus, given the notoriety of Complainants’ marks and Respondent’s registration of a multitude of domain names all incorporating these marks, the mere passive holding of the disputed domain names and Respondent’s failure to present any countervailing evidence to rebut Complainant’s claims, the Panel can only conclude that the disputed domain names were registered and used in bad faith under paragraph 4(a)(iii) of the Policy. See OVH SAS v. EE, Emre Erim,WIPO Case No. D2012-0330. There is simply no plausible legitimate reason for Respondent to have registered the disputed domain names without any association with or authorization from Complainants, particularly to redirect Internet users to an apparently unrelated, albeit blank, website. Accordingly, the Panel finds that Complainants succeed under this element 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 names Brian J. Winterfeldt
Sole Panelist
Date: April 1, 2020
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