Altria Group, Inc. and Altria Group Distribution Company v. HSH JKHK / HFHFD and Iftekar Shimon / 25 Level
Claim Number: FA1705001732161
Complainant is Altria Group, Inc. and Altria Group Distribution Company , represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is HSH JKHK / HFHFD and Iftekar Shimon / 25 Level, Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altriacoin.biz>, registered with NameCheap, Inc.; and <altriacoin.com>, registered with eNom, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2017; the Forum received payment on May 22, 2017.
On May 17, 2017, both NameCheap, Inc. and eNom, LLC confirmed by e-mail to the Forum that the <altriacoin.biz> and <altriacoin.com> domain names are registered with NameCheap, Inc. and eNom, LLC, respectively, and that Respondent is the current registrant of the names. NameCheap, Inc. and eNom, LLC have verified that Respondent is bound by the NameCheap, Inc. and eNom, LLC registration agreements 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 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@altriacoin.biz, postmaster@altriacoin.com. Also on May 25, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.[i]
Paragraph 3(a) of 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.”
There are two named complainants: Altria Group, Inc. and Altria Group Distribution Company. The Complaint does not address the Forum’s Supplemental Rule 1(e). All that is said is that Altria Group, Inc. is the parent company of Altria Group Distribution Company.
The parent company owns, inter alia, United States Patent & Trademark Office (“USPTO”) Regn. No. 3,029,629 registered December 13, 2005 for the word mark ALTRIA. The Complaint does not present any special facts relating to use of that trademark by the subsidiary company. It is therefore unclear to the Panel why Complainant has sought to include the subsidiary company as a party.
Nonetheless, in the absence of any contradictory evidence or contest by Respondent it is reasonable for the purposes of Supplemental Rule 1(e) to accept Complainant’s uncontested submission that the named complainants are part of the one company group and have a common interest in the disputed domain name.
In this case the Panel therefore treats the named complainants as a single entity[ii] and all references herein to “Complainant” are to be understood in that way. In that respect the Panel notes that Complainant requests that the domain name be transferred to both named complainants.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the domain name registrants are fictitious and that the domain names are owned and controlled by the one, unknown, person or entity.
In support of that claim Complainant refers to the virtual identity of the two domain names. Further, Complainant notes that the screenshot of the resolving website, www.altriacoin.biz, alludes to a business run by Altria Group Limited. That company’s Facebook page references a website at http//altriacoin.com. Complainant asserts that screenshots of the two resolving websites are also nearly identical.
The Panel has referred to the exhibits said to support those claims and notes that there is no screenshot of a website resolving from <altriacoin.com>. The Panel made its own research and found that no such website seemed to exist at the time of writing this decision.
Nevertheless, the Panel also observes that the disputed domain names were registered within two days of one another and so finds that, on balance, there is sufficient evidence demonstrating that the listed domain name holders are aliases and that the domain names are controlled by a single, unknown person or entity. The Panel accordingly treats them as registered by the same domain name holder for the purposes of the Rules. All references herein to “Respondent” are to the two named respondents.
A. Complainant
Complainant asserts trademark rights in ALTRIA and alleges that the disputed domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. In particular, Complainant asserts that Respondent is using the domain names for an illegal purpose.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith. In particular, Complainant asserts that Respondent attempts to deceive Internet users, who believed they were investing with Complainant, into investing in Respondent’s (illegal) scheme.
B. Respondent
Respondent did not submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns a USPTO trademark registration for ALTRIA;
2. the disputed domain names were registered on May 25, 2017 and May 27, 2017;
3. the disputed domain name <altriacoin.biz> resolves to a webpage offering high yield investment opportunities;
4. the disputed domain name <altriacoin.com> is not in use; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant has provided evidence of its USPTO trademark registration for ALTRIA and so has established trademark rights.
Complainant submits that the disputed domain names are confusingly similar to its trademark since they take the trademark and merely add the generic term “coin” and either the gTLDs “.biz” or “.com.”
The Panel accepts that for the purposes of comparison the gTLDs can in this case be disregarded. The comparison then reduces to the trademark and the term altriacoin.
Complainant’s use of the word “generic” is unclear. If Complainant means that “coin” is an ordinary dictionary word, that is one thing. If it means that somehow within the context of the goods or services provided by Complainant under the trademark the word “coin” is descriptive, that is another. The submission is inchoate.
The Panel makes this simpler analysis. The trademark is an apparently invented word with a significant degree of inherent distinctiveness. The addition of the word “coin” does not create an obviously different word in terms of pronunciation or meaning. As such, the additions do not distinguish the domain names from the trademark in any significant way so as to avoid confusion.[iii]
Panel finds the domain names to be confusingly similar to the trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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 trade mark or service mark at issue.
Complainant must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by either of the disputed domain names. There is no other evidence of how Respondent might be commonly known. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. Paragraph 4(c)(i) does not apply.
As noted above, the name <altriacoin.biz> resolves to a webpage promoting high yield investment opportunities. That use is clearly commercial in nature. Additionally, the use of the domain name does not purport in any way to entail nominative use of the trademark. For those reasons paragraph 4(c)(iii) does not apply.
However, a question arises as to whether the use is in connection with a bona fide offering of goods or services (paragraph 4(c)(ii)). Complainant asserts that use of the disputed domain names is for an illegal purpose. It claims that the domain names are used in connection with investment programs akin to illegal “Ponzi” schemes.[v]
There is no evidence of that claim. What is exhibited to the Complaint are screenshots of comments from bloggers seemingly critical of the results of the investment programs. Not all of that commentary is in English. Some label the scheme a “scamm” (sic) without giving explicit detail.
The validity and provenance of this criticism is so unclear that the panel can attach very little weight to it. To make even a prima facie finding that the Respondent’s business is illegal on the basis of this material would be unreliable.
It is noteworthy, too, that on the evidence there is essentially no relationship between Respondent’s business and the business conducted by Complainant by reference to the trademark.
The Panel finds that Complainant has failed to establish a prima facie case that Respondent lacks rights or a legitimate interest in the domain name <altriacoin.biz>.
Whilst the domain name <altriacoin.com> has not been used (a fact which has sometimes gone against a respondent[vi]), the Panel observes that the domain names had not been registered a month at the time the Complaint was lodged.
Further, the same evidence which Complainant relies upon to tie the ownership of the domain names together also serves to demonstrable preparations to use the <altriacoin.com> domain name in connection with the same business already conducted by reference to the <altriacoin.biz> name.
The Panel finds that Complainant has failed to establish a prima facie case that Respondent lacks rights or a legitimate interest in the domain name <altriacoin.com>.
Accordingly, the Panel finds that Complainant has not satisfied the second limb of the Policy.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <altriacoin.biz> and <altriacoin.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: June 26, 2017
[i] Both named complainants.
[ii] See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (FORUM May 12, 2006), where 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.”; see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (FORUM Dec. 28, 2003), where the panel treated two complainants as a single entity where both held rights in trademarks contained within the disputed domain names; see Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (FORUM Feb. 6, 2004), where the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
[iii] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), finding that the elimination of spaces between terms does not generally create a new distinctive term.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[v] A Ponzi scheme is a fraudulent investment operation where the operator generates returns for older investors through revenue paid by new investors, rather than from legitimate business activities.
[vi] See, for example, Thermo Electron Corp. v. Xu, FA 713851 (FORUM July 12, 2006) finding that the respondent’s non-use of the disputed domain names demonstrated that the respondent was not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
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