Complainant is Altria Group, Inc. and Altria Group Distribution Company, United States of America, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Privacy Protection / Domain Administrator, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 4, 2021 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 October 6, 2021.
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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2021.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on November 9, 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.
4. Factual BackgroundAccording to the information provided in the Complaint, Complainant is the parent company of three tobacco operating companies, including Philip Morris USA Inc.
According to the evidence submitted, Complainant owns numerous registrations for the trademark ALTRIA, including:
- U.S. registration No. 3,029,629 for the word mark ALTRIA, registered on December 13, 2005, for services in classes 35, 36, and 42;
- U.S. registration No. 3,073,900, for the figurative mark ALTRIA registered on March 28, 2006, for services in classes 35, 36, and 42.
In addition, Complainant operates the website “www.altria.com” consisting of the ALTRIA mark.
The Domain Name was registered on August 19, 2021. The Domain Name resolves to a website containing pay-per-click links. The Domain Name is also offered for sale.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions A. ComplainantComplainant submits that the Domain Name is confusingly similar to Complainant’s ALTRIA trademark as it captures the entirety of the trademark and simply adds the generic terms “total“ and “benefits” to the end of the trademark.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name. According to Complainant, Respondent is not commonly known by the Domain Name. Furthermore, Complainant has not licensed, authorized or permitted Respondent to use Complainant’s trademark. Complainant mentions that Respondent is using the Domain Name to direct Internet users to a website featuring links to third-party websites, some of which relate to employee benefits, which could potentially be associated to those services offered by Complainant to its own employees. As such, Respondent is not using the Domain Name to provide a bona fide offering of goods and services.
Moreover, the Domain Name is being offered for sale in an amount that far exceeds Respondent’s out-of-pocket expenses which serves as further evidence of Respondent’s lack of rights and legitimate interests.
Complainant asserts that the Domain Name was registered and is being used in bad faith. According to Complainant, its ALTRIA trademarks are well-known. Complainant has marketed and sold its goods and services using this trademark since 2003. It is more likely than not that the fame of Complainant’s trademark has motivated Respondent to register the Domain Name.
Furthermore, Complainant submits that Respondent, by creating a likelihood of confusion between Complainant’s trademarks and the Domain Name, has demonstrated an intent to capitalize on the goodwill of Complainant’s trademarks in order to increase traffic to the website associated with the Domain Name for Respondent’s pecuniary gain, as evidenced by the presence of multiple pay-per-click links. Finally, according to Complainant, Respondent’s offer to sell the Domain Name for an amount in excess of its out-of-pocket expenses constitutes bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark.
Complainant has established that it is the owner of several trademark registrations for ALTRIA. The Domain Name incorporates the trademark ALTRIA in its entirety, with the addition of the descriptive terms “total” and “benefits”. Many UDRP panels have found that a disputed domain name is confusingly similar where the relevant trademark is recognizable within the disputed domain name, while the addition of other terms (whether descriptive, geographical, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel shares the same view and notes that Complainant’s registered trademark ALTRIA is fully included in the Domain Name and placed at the first position therein. The generic Top-Level Domain (“gTLD”) “.com” is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIn the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the undisputed submission of and evidence provided by Complainant the Domain Name is publicly offered for sale at USD 694 and resolves to a pay-per-click parking page with various links including links to third-party websites, some of which relate to employee benefits, which could be associated to those services offered by Complainant to its own employees.
The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known ALTRIA trademark, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has Respondent acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case. It is acknowledged that once the Panel finds a prima facie case has been established, as the Panel so finds here, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name.
Since Respondent in the case at hand failed to come forward with any allegations or evidence, under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the Domain Name has been registered and is being used in bad faith.
Noting the status of the ALTRIA mark and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant’s ALTRIA mark, in particular as the Domain Name includes the entirety of the ALTRIA mark.
The Panel notes that the Domain Name resolves to a website containing pay-per-click links. The Panel also notes that the Domain Name contains the entirety of Complainant’s ALTRIA trademark, which indicates, in the circumstances of this case, that Respondent registered and uses the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel also notes the undisputed assertion of and evidence provided by Complainant that it appears that bad faith registration and use is further indicated by the fact that the Domain Name was publicly offered for sale for an amount of USD 694, which indicates that Respondent likely registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
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 Name,
Dinant T. L. Oosterbaan
Sole Panelist
Date: November 12, 2021