Altria Group, Inc. v. Peter Roussoniclos
Claim Number: FA1409001581760
Complainant is Altria Group, Inc. (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Peter Roussoniclos (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altriaecig.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2014; the National Arbitration Forum received payment on September 29, 2014.
On September 26, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <altriaecig.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@altriaecig.com. Also on October 1, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On October 22, 2014 and October 28, 2014, the Forum received correspondence from Respondent; however, Respondent did not submit a timely, proper Response to the Complaint.
Having received no proper Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
1. Complainant is the parent company of the tobacco companies, Philip Morris USA Inc., U.S. Smokeless Tobacco Company LLC, John Middleton Co., and Nu Mark LLC. The ALTRIA mark is used in connection with the names of the operating companies. Complainant offers various services under its ALTRIA mark including, charitable services, provides scholarships, financial services, and providing information about underage tobacco prevention and tobacco issues. Complainant also owns the <altria.com> domain name and uses it to provide information about Complainant and its operating companies.
2. Complainant owns rights in its ALTRIA mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,073,900 registered March 28, 2006).
3. Respondent’s <altriaecig.com> domain name is confusingly similar to Complainant’s ALTRIA mark.
4. Respondent has no rights or legitimate interests in the <altriaecig.com> domain name.
a. Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Peter Roussoniclos” as registrant.
b. Respondent is passively holding the disputed domain name.
5. Respondent registered and is using the <altriaecig.com> domain name in bad faith.
a. Respondent is not making an active use of the disputed domain name.
b. Respondent had actual knowledge of Complainant and its registered ALTRIA mark when Respondent registered the disputed domain name.
Respondent
Respondent did not submit a proper Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it is the parent company of the tobacco companies, Philip Morris USA Inc., U.S. Smokeless Tobacco Company LLC, John Middleton Co., and Nu Mark LLC. Complainant asserts that the ALTRIA mark is used in connection with the names of the operating companies. Complainant further states that it offers various services under its ALTRIA mark including, charitable services, scholarships, financial services, and information about underage tobacco prevention and tobacco issues. Complainant provides that it also owns the <altria.com> domain name and uses it to provide information about Complainant and its operating companies. Complainant claims that it owns rights in its ALTRIA mark through its registrations with the USPTO (Reg. No. 3,073,900 registered March 28, 2006). Past panels have continuously held that evidence of a registration with the USPTO is sufficient to establish rights in a given mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel concludes that Complainant has rights in the ALTRIA mark under Policy ¶ 4(a)(i).
Complainant states that Respondent’s <altriaecig.com> domain name is confusingly similar to Complainant’s ALTRIA mark under Policy ¶ 4(a)(i). Complainant states that Respondent’s domain name features Complainant’s ALTRIA mark in its entirety with the addition of the term “e-cig” and the generic top-level domain (“gTLD”) “.com.” Prior panels have continuously found that these variations are insufficient to differentiate a disputed domain name from a given mark. See United Services Auto. Ass’n v. Michele Dinoia a/k/a SZK.com, FA 497783 (Nat. Arb. Forum July 22, 2005) (“Respondent incorporates Complainant’s entire USAA mark with the addition of “insurance,” a generic term describing the business in which Complainant engages, and the generic top level domain ‘.com.’ Such minor changes fail to significantly distinguish Respondent’s domain name from Complainant’s USAA mark pursuant to Policy ¶ 4(a)(i).”); see also Hugh Jackman v. Peter Sun, FA 248716 (Nat. Arb. Forum May 10, 2004) (“Generic top-level domains are irrelevant in determining whether a domain name is identical to another’s mark.”). The Panel concludes that Respondent’s <altriaecig.com> domain name is confusingly similar to Complainant’s ALTRIA mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <altriaecig.com> domain name. In so arguing, Complainant contends that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant states that the WHOIS information for the disputed domain name lists “Peter Roussoniclos” as registrant. The panel in Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Nat. Arb. Forum Oct. 29, 2013) held that some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record.” Likewise, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Taking these prior panel holdings into consideration, the Panel concludes that Respondent is not commonly known by the <altriaecig.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). Complainant explains that Respondent is passively holding the disputed domain name. Complainant states that Respondent is undoubtedly familiar with Complainant’s marks and is attempting to trade off the goodwill established by Complainant. Respondent’s disputed domain name resolves to a parked website displaying various links to third-party vendors including “HomeServe USA,” “Free Online Public School,” “Car Insurance,” “Marketing with Postcards,” and “Best Dividend Stocks.” Past panels have found that using a confusingly similar domain name to resolve to a domain name displaying links to unrelated third-parties does not convey rights or legitimate interests in a domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii) by using a confusingly similar domain name to resolve to a pay-per-click website.
Complainant has proven this element.
Complainant alleges that Respondent registered and is using the <altriaecig.com> domain name in bad faith. Complainant claims that Respondent is not making an active use of the disputed domain name, although, Respondent’s disputed domain name resolves to a website displaying various links to unrelated third-parties. Past panels have found that using a confusingly similar domain name resolving to a website featuring pay-per-click links, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to attract Internet users to Respondent’s resolving website for commercial gain is bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual knowledge of Complainant and its registered ALTRIA mark when Respondent registered the <altriaecig.com> disputed domain name. Complainant claims that its trademark registrations for the ALTRIA mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While past panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriaecig.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 7, 2014
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