Altria Group, Inc. and Altria Group Distribution Company v. Zhichao Yang
Claim Number: FA1604001670787
Complainant is Altria Group, Inc. and Altria Group Distribution Company ("Complainant"), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Zhichao Yang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altriaemplyee.com> and <altriaemploye.com>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2016; the Forum received payment on April 19, 2016.
On April 18, 2016, NameSilo, LLC confirmed by email to the Forum that the <altriaemplyee.com> and <altriaemploye.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@altriaemplyee.com and postmaster@altriaemploye.com. Also on April 25, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the parent company of four tobacco operating companies, including the manufacturer of the leading brand of cigarettes in the United States, and the world's leading manufacturer of moist smokeless tobacco, and of a distribution company called Altria Group Distribution Company. Complainant has used the ALTRIA mark in connection with this business since 2003, and holds multiple registrations for the mark on the Principal Register of the U.S. Patent and Trademark Office. Complainant also claims common law rights in the mark.
The disputed domain names <altriaemplyee.com> and <altriaemploye.com> were registered through a privacy service in January 2016, concealing the registrant's identity. The domain names resolve to web pages comprised of "sponsored" links, some of which include Complainant's mark. Complainant states that it has not authorized or licensed Respondent to use its mark in any form, and asserts that Respondent is not commonly known by either of the disputed domain names. On these grounds Complainant contends that the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used in bad faith.
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(f), 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 (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.").
Each of the disputed domain names corresponds to Complainant's ALTRIA mark, adding a misspelled or alternate form of the generic term "employee" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Altria Group, Inc. v. Abbaa Inc., D2011-0420 (WIPO Apr. 20, 2011) (finding <altriagreen.com> confusingly similar to ALTRIA); Hilton Worldwide v. MGA Enterprises Ltd., D2010-1064 (WIPO Aug. 27, 2010) (finding <hiltonemployee.com> confusingly similar to HILTON). The Panel finds that each of the disputed domain names is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's well-known mark, and apparently their sole use has been in connection with websites comprised of sponsored advertising links. See, e.g., National Geographic Society v. Ryan G Foo / PPA Media Services, FA 1609301 (Nat. Arb. Forum Apr. 16, 2015) (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's use of domain names incorporating Complainant's mark to profit from confusion by displaying what presumably are pay-per-click links is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). See, e.g., BHCosmetics, Inc. v. Zhichao Yang, FA1604344 (Nat. Arb. Forum Mar. 15, 2015); Homer TLC, Inc. v Zhichao Yang, FA 1508957 (Nat. Arb. Forum Aug. 24, 2013). In addition, the Panel is inclined to view Respondent's behavior as a continuation of what previous panels have determined to be a pattern of bad faith registrations under paragraph 4(b)(ii). See Kabbage, Inc. v. Zhichao Yang, FA 1624159 (Forum July 28, 2015); BHCosmetics, Inc., supra; Homer TLC, Inc., supra. Respondent's use of a privacy service in an attempt to conceal its identity, though not itself dispositive, lends further support to the inference of bad faith intent. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriaemplyee.com> and <altriaemploye.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 24, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page