The 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.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, U.S. / Dan Quency Villar, Altria, Philippines.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 the Complainant on October 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021.
After receiving an informal communication from the Respondent on October 21, 2021, the Complainant requested the Proceedings to be suspended on November 15, 2021, to explore settlement options. On December 29, 2021, the Complainant requested the suspension to be extended of an additional 30 days, which was granted by the Center.
On January 14, 2022, the Complainant requested to reinstate the proceedings, which was done by the Center on January 17, 2022. As the response due date had passed the Center proceeded to panel appointment.
The Center appointed Debrett G. Lyons as the sole panelist (“the Panel”) in this matter on January 24, 2022. 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. Preliminary procedural matter: multiple complainantsThere are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Complaint states that Altria Group Inc. is the parent company of Altria Group Distribution Company. The evidence shows that both named complainants independently own national registrations for the relevant trade mark, ALTRIA, and so it might be said that one or other could have been named as the Complainant without prejudice to the Decision (below). Nevertheless, absent any challenge from the Respondent, the Panel accepts that the named complainants are sufficiently linked for the purposes of these proceedings. Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant”. That said, it is noted here that the Complaint petitions the Panel to “transfer the Disputed Domain Name to the Complainant” and the ambiguity entailed therein is considered later.
5. Factual BackgroundThe factual findings pertinent to the decision in this case are that:
(1) the Complainant is the owner of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 3,029,629, filed November 7, 2001 and registered December 13, 2005, for the trade mark, ALTRIA (the “Trade Mark”1 );
(2) the disputed domain name was registered on August 20, 2021 and has not been used other than to resolve to a webpage showing pay-per-click (PPC) links such as “Information about Tobacco”, “Lower Mortgage Rates” and “Best Online Stock Trading”; and
(3) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
6. Parties’ Contentions A. ComplainantThe Complainant asserts trade mark rights in ALTRIA. It holds a national registration for the Trade Mark and submits that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because it has no trade mark rights of its own; is not known by the disputed domain name; and the disputed domain name has not been used in relation to any legitimate enterprise.
The Complainant alleges that the Respondent registered the disputed domain name in bad faith having targeted the Complainant’s business.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
B. RespondentThe Respondent did not submit a Response.
7. Discussion and FindingsAccording to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its registration of the Trade Mark with the USPTO, a national trade mark authority, and so the Panel finds that the Complainant has trade mark rights.
The disputed domain name takes the Trade Mark and merely adds the gTLD, “.digital”, which can be disregarded for the purposes of comparing the disputed domain name with the Trade Mark.3 The Panel finds that the disputed domain name is identical to the Trade Mark and so finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.4
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
In consequence of these administrative proceedings, the Registrar disclosed the name of the underlying domain name registrant as “Dan Quency Villar, Altria”, which does not provide compelling evidence that the Respondent is commonly known by the disputed domain name. The Panel finds no other evidence that the Respondent might be commonly known by the disputed domain name.
Further, the Complainant states that there is no association between the Parties and there is nothing to contradict that claim. There is no evidence that the Respondent has any trade mark rights.
As stated already, the disputed domain name resolves to a webpage showing links such as “Information about Tobacco”, “Lower Mortgage Rates” and “Best Online Stock Trading”. The Complainant describes the links as pointing to services provided in competition with Complainant’s business under the Trade Mark. This appears to be an overstatement. The Complaint states that Altria Group Inc. is the parent of three companies making tobacco or tobacco replacement products. It describes Altria Group Distribution Company as having more diverse activities under the Trade Mark, but none in the Panel’s assessment which are in the nature of financial services or services of the kind promoted at the resolving webpage. Nonetheless, the fact that some of those services appear to be related to the Complainant’s business interests is enough for the Panel to find that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name5 , and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(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 paragraph 4(b)(iv), above, has direct application to the facts. The Panel has already found the disputed domain name to be identical to the Trade Mark. Confusion is inevitable. The Panel accepts the Complainant’s assertion that it is likely that the respondent is gaining commercially by way of PPC fee collection. In terms of the Policy, the Panel finds that the Respondent has used the disputed domain name with the intention to attract, for commercial gain, Internet users to the resolving webpage by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of that webpage.
The Panel finds that the Complainant has satisfied the third and final element of the Policy.
8. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel finds that the Complaint has been established. As noted already, the Complaint is unclear as to the intended transferee. As best the Panel can interpret the Complaint, transfer should be to the Complainants, jointly. Accordingly, the Panel orders that the disputed domain name
Debrett G. Lyons
Sole Panelist
Date: February 7, 2022
1 Technically, a “service mark”, but the distinction being of no significance to the outcome of paragraph 4(a)(i).
2 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 See section 1.11.1 of the WIPO Overview 3.0.
4 See, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
5 See section 2.9 of the WIPO Overview 3.0.