Altria Group, Inc. and Altria Group Distribution Company v. ZhangPeng / Zhang Peng
Claim Number: FA1604001671002
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 ZhangPeng / Zhang Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altria.top>, registered with Jiangsu Bangning Science & technology Co. Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2016; the Forum received payment on April 20, 2016. The Complaint was received in both English and Chinese.
On April 21, 2016, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <altria.top> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the names. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. Ltd. 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 27, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 17, 2016 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@altria.top. Also on April 27, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the ALTRIA mark in connection with its tobacco product operating businesses. Complainant has registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005), which demonstrates rights in the mark.
2. Respondent’s <altria.top> domain name is confusingly similar/identical to the ALTRIA mark as it incorporates the mark entirely and merely adds the top-level domain (“TLD”) “.top.”
3. Respondent has no rights or legitimate interests in the <altria.top> domain name. Respondent is not commonly known by the domain name.
4. Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <altria.top> domain name. Rather, Respondent is engaging in inactive holding of the domain name.
5. Respondent registered and uses the <altria.top> domain name in bad faith. Respondent’s inactive holding of the domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Respondent must have had constructive or actual notice of Complainant's rights in the ALTRIA mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ALTRIA mark. Respondent’s domain name is confusingly similar to Complainant’s ALTRIA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <altria.top> domain name, and that Respondent registered and uses the domain name 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.”).
Complainant uses the ALTRIA mark in connection with its tobacco product operating businesses. Complainant has registered the ALTRIA mark with the USPTO (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005), supporting rights in the mark under Policy ¶ 4(a)(i). Registration with the USPTO is sufficient to establish rights in a trademark. 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.).
Next, Complainant argues that the domain is composed solely of the ALTRIA mark with only the “.top” TLD added. The addition of a TLD alone does not distinguish a domain name from a mark in which a complainant has rights. See Las Vegas Sands Corp. v. JiangYuTao, FA 1663688 (Forum Apr. 11, 2016) (finding the disputed domain legally identical as it “takes the trademark and adds only the non-distinctive TLD, ‘.top.’”). Accordingly, the Panel finds that the <altria.top> domain name is identical and/or confusingly similar to Complainant’s ALTRIA mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <altria.top> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <altria.top> domain name. Complainant asserts that Respondent is not commonly known by the domain name. The WHOIS information regarding the domain name lists “ZhangPeng / Zhang Peng” as registrant. Complainant also asserts that it has not given Respondent permission to use its ALTRIA mark. Therefore, in light of the available evidence, the Panel agrees Respondent is not commonly known by the <altria.top> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding 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).
Complainant further argues that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <altria.top> domain name. Complainant contends that the domain name does not resolve to an active website. In support of this argument, Complainant includes screenshots of a Google™ search of the disputed domain. The inactive holding of domain names without demonstrable preparations for use does not constitute rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <altria.top> domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s inactive holding of the domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). The record reflects that Respondent has held the <altria.top> domain since November 20, 2014, in an inactive status. The inactive holding of a domain name incorporating the mark of an another constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant further alleges that Respondent must have had actual notice of Complainant's rights in the ALTRIA mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registration with the USPTO, nine years before the domain name was registered in October 2014. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <altria.top> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 7, 2016
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