Complainant is Altria Group, Inc. and Altria Group Distribution Company, United States of America (“U.S.”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Christine Englehart, Jeu de Paume, Inc., United States of America.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 2021, 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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 28, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 7, 2021. 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.
On October 7, 2021, Complainant submitted a supplemental submission requesting the addition of another domain name
Upon request of the Panel, the Center transmitted by email to the Registrar a request for registrar verification in connection with the second Domain Name. In this regard, the Registrar has confirmed that the registrant details for the second Domain Name are the same Respondent. On October 20, 2021, the Panel requested the Center issue Procedural Order No. 1 to the Parties. Accordingly, the Center forwarded Complainant’s supplemental filing and the Panel’s Procedural Order No. 1 to the Parties on October 20, 2021. The order requested Respondent to provide comments, if any, on Complainant’s request to add the second Domain Name to the current proceeding, by October 25, 2021, and extended the Decision due date until November 1, 2021. Respondent did not reply.
4. Factual BackgroundComplainant, Altria Group, Inc. (“Altria Group”), is the parent company of three tobacco operating companies: Philip Morris USA Inc., the manufacturer of MARLBORO cigarettes; U.S. Smokeless Tobacco Company LLC, a manufacturer of moist smokeless tobacco, which is sold under brands such as SKOAL and COPENHAGEN; and, John Middleton Co., the manufacturer of BLACK & MILD brand of cigars.
Complainant owns several registered trademarks including: U.S. Registration Nos. 3,029,629, registered on December 13, 2005, and 3,073,900, registered on March 28, 2006, for the respective marks ALTRIA, and ALTRIA and design in connection with charitable, financial, and philanthropic services. Complainant is also the parent company of Altria Group Distribution Company (“AGDC”). Since 2003, AGDC has provided tobacco product distribution services and consumer engagement services in the field of tobacco products under the ALTRIA trademark. AGDC owns U.S. Registration Nos. 4,815,825, registered September 22, 2015, and 4,820,612, registered September 29, 2015, for the respective marks ALTRIA, and ALTRIA and design. Complainant also owns and operates the domain name
Respondent registered each of the Domain Names on July 11, 2021. Each of the Domain Names resolves to the same Registrar parking page.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith.
In particular, Complainant contends that it has trademark registrations for the ALTRIA marks and own a domain name incorporating the ALTRIA marks. Complainant contends that Respondent registered and is using the Domain Names to confuse Internet users looking for bona fide and well-known ALTRIA products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Request for addition of second Domain Name by Complainant in current proceedingAs a general rule, domain names held by the same registrant(s) may be added to a complaint before notification to the respondent(s)/formal commencement of the relevant proceeding. See WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.1.
Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. WIPO Overview 3.0, section 4.12.2.
Complainant asserts that the Domain Names are commonly owned by Respondent, were both registered on the same day through the same Registrar, GoDaddy.com, LLC, share a common name pattern “altria” in combination with the numbers “360”, and each resolve to the same parked page. Complainant notes that Respondent failed to submit a response to the Complaint concerned with the Domain Name with the same legal and factual grounds as the second Domain Name.
In the current situation, Complainant has provided evidence that it holds the relevant trademark rights for ALTRIA, and the proposed Domain Name has been shown to be registered by the same Respondent. Moreover, the Domain Names were both registered on the same day through the same Registrar, share a common name pattern, and resolve to the same parked page. Respondent has been notified of the current proceeding as well as the supplemental filing requesting addition of the second Domain Name, and did not respond to the Complaint or the supplemental filing.
Based on the foregoing, the Panel finds that addition of the additional Domain Name would be fair and equitable to all Parties, and therefore grants the request to include the second Domain Name
Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
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 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, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant 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 SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the ALTRIA marks, as noted above. Complainant has also submitted evidence, which supports that the ALTRIA marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the ALTRIA marks.
With Complainant’s rights in the ALTRIA mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Names are confusingly similar to Complainant’s ALTRIA marks. These marks are recognizable in the Domain Names. The incorporation of the ALTRIA mark with the addition of the word “group” and number(s) “360” after “altria”, in the Domain Name
Thus, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a 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 a 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.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the ALTRIA marks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the ALTRIA trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the ALTRIA marks.
In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that each of the Domain Names resolved to a Registrar parked page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot, under the circumstances, confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Names.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the 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.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the ALTRIA marks long predate the registration of the Domain Names by Respondent, more specifically, the ALTRIA marks, have been registered since at least as early as 2005, well before Respondent registered the Domain Names on July 11, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s ALTRIA marks and related services are widely known and recognized including in the U.S., where Respondent resides. Therefore, Respondent knew or should have known Complainant and its ALTRIA marks at the time of registration of the Domain Names. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
As discussed above, the Domain Names each resolve to a Registrar parking page. The non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Here, the present circumstances, including the distinctiveness and reputation of the ALTRIA marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Names may be put, support a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names,
Kimberley Chen Nobles
Sole Panelist
Date: November 1, 2021