Altria Group, Inc. and Altria Group Distribution Company v. Tian Dai / Daitian
Claim Number: FA1705001729817
Complainant is Altria Group, Inc. and Altria Group Distribution Company (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, United States. Respondent is Tian Dai / Daitian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altriagroup.website>, <altriagroup.store>, <altriagroup.space>, <altriagroup.info>, <altriagroup.date>, <altriagroup.xyz>, and <altriagroup.ltd>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn); HiChina Zhicheng Technology Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 4, 2017. The Complaint was received in both Chinese and English.
On May 4, 2017; May 10, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn); HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <altriagroup.website>, <altriagroup.store>, <altriagroup.space>, <altriagroup.info>, <altriagroup.date>, <altriagroup.xyz>, and <altriagroup.ltd> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn); HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn); HiChina Zhicheng Technology Limited has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn); HiChina Zhicheng Technology Limited 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 May 23, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 12, 2017 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@altriagroup.website, postmaster@altriagroup.store, postmaster@altriagroup.space, postmaster@altriagroup.info, postmaster@altriagroup.date, postmaster@altriagroup.xyz, postmaster@altriagroup.ltd. Also on May 23, 2017, the Chinese language 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.
A timely Response was received and determined to be complete on May 25, 2017.
On May 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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 engages in the development, production, and distribution of tobacco products, including cigarettes, cigars, smokeless, and electronic versions. Complainant engages in its business in numerous countries around the world. Complainant registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,029,629, registered Dec. 13, 2005). See Compl., at Attached Ex. 4. Respondent’s disputed domain names are confusingly similar as they all contain the entire ALTRIA mark and append it with the generic term “group” along with various generic top-level domains (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the ALTRIA mark. Additionally, Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use with all of the disputed domain names. See Compl., at Attached Ex. 8.
Respondent registered and uses the disputed domain names in bad faith. Respondent must have had actual knowledge of Complainant because the ALTRIA mark is the only distinctive term used in any of the domain names. Further, Respondent fails to make an active use of any of the disputed domain names. See Compl., at Attached Ex. 8. Finally, Respondent registered multiple infringing domain names containing the ALTRIA mark.
B. Respondent
Respondent does not make any contentions under Policy ¶ 4(a)(i),(ii),(iii).
Complainant has continuously used its ALTRIA trade name and mark in interstate commerce for numerous years as the owner of the above-referenced tobacco product operating companies. Complainant owns the altria.com and altriagroup.com domain names and operates a website at www.altria.com that provides information about Altria and its operating companies, among other things.
The Panel notes that Respondent first registered all of the <altriagroup.website>, <altriagroup.store>, <altriagroup.space>, <altriagroup.info>, <altriagroup.date>, <altriagroup.xyz>, and <altriagroup.ltd> domain names on December 2, 2016. See Compl., at Attached Ex. 2.
As will be more fully explained below, Complainant have made the necessary showing for the domain name to be transferred to them. Although this Complaint is directed to a respondent who has registered seven domain names using three different addresses and two different registrars, Complainant submits, on information and belief, that the Domain Names are owned by the same person or entity for the following reasons:
1. All seven Domain Names begin with “altriagroup” which is Altria Group’s corporate name.
2. The registrant and registrant organization listed for all seven domain names are the same, namely: Tian Dai/Daitian. (See Exhibit 2)
3. The email address listed for the registrant in the Whois records for all seven domain names is 139669456@qq.com. (See Exhibit 2)
4. The Domain Names were all registered on December 2, 2016. (See Exhibit 2)
As such, the Domain Names appear to be controlled by the same person or entity and Complainant has shown that the Complaint complies with Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Policy.
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.
Preliminary Issues:
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (see paragraph 4.3 of WIPO Overview 2.0).
Complainant request the language of proceeding to be English. The Respondent did not reply to the request of Complainants.
As far as the communication to Respondent was both in English and Chinese which gave Respondent an opportunity to object to Complainants’ request, and bearing in mind Respondent replied in English, the Panel is satisfied that Respondent has sufficient familiarity with English that Respondent should be able to understand the language of the Complaint and have chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.
B. Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The consensus view of UDRP panels on the consolidation of multiple complainants is summarized in paragraph 4.16 of the WIPO Overview 2.0, whereby: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; […]. In order for the filing of a single complaint brought by multiple complainants […] which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
It can be deemed that the multiple complainants have a specific common grievance against the respondent where the multiple complainants have a common legal interest in the trademark rights on which the complaint is based. Multiple complainants may establish a common legal interest if the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture (Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./Official Tickets Ltd, WIPO Case No. D2009-0331).
There are two Complainants in this matter: Altria Group, Inc. and Altria Group Distribution Company (“AGDC”). Complainants argues that Altria Group is the parent company for AGDC. Since at least as early as 2003, AGDC has provided tobacco product distribution services and consumer engagement services in the field of tobacco products under the ALTRIA trademark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm., v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
In view of the above, the Panel finds that Complainants have a specific common grievance against the Respondent.
Complainant claims it registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,029,629, registered Dec. 13, 2005). See Compl., at Attached Ex. 4. Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s ALTRIA mark as they simply append the mark with the generic term “group” along with various gTLDs. Adding descriptive terms to marks does not sufficiently distinguished domain names from a complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the addition of a gTLD is irrelevant to a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore agrees that Respondent has not included elements in the domain names that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Therefore, the Panel finds that Respondent has created an identical or confusingly similar domain names and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
It is now well established that 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 (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 (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 contends that Respondent has no rights or legitimate interests in the disputes domain names. The WHOIS identifies “Tian Dai / Daitian” as the registrant for the domain names. See Compl., at Attached Ex. 2. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ALTRIA mark. Therefore, the Panel use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to their registration, and Complainant has not given Respondent permission to use any of the disputed domain names. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to make an active use out of any of the disputed domain names. Failure to actively use confusingly similar domain names can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpages for the disputed domain names. See Compl., at Attached Ex. 8. It appears as though the domain names do not resolve to any webpage except a normal Google search screen. Id. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
In the Panel’s view the above is more than sufficient to enable Complainant to succeed under this element. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name as provided by the Policy ¶ 4(a)(ii).
Accordingly, the Panel finds that the totality of the evidence suggests bad faith under a nonexclusive consideration of Policy 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriagroup.website>, <altriagroup.store>, <altriagroup.space>, <altriagroup.info>, <altriagroup.date>, <altriagroup.xyz>, and <altriagroup.ltd> domain names be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: June 15, 2017
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