Altria Group, Inc. and Altria Group Distribution Company v. Futureproof Domains
Claim Number: FA1610001697062
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 Futureproof Domains (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altria.group>, registered with Uniregistrar Corp.
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 Forum electronically on October 6, 2016; the Forum received payment on October 12, 2016.
On October 7, 2016, Uniregistrar Corp confirmed by e-mail to the Forum that the <altria.group> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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.group. Also on October 12, 2016, 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 November 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the ALTRIA trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,029,629, registered Dec. 13, 2005). The mark is used in connection with conducting applicants shareholder and investor relations, namely providing shareholder record keeping and corporate information and analyses. The mark is also used for the administration of employee benefit and pension plans, namely dividend reinvestment plans, retirement plans, deferred profit-sharing plans, and flexible spending accounts for dependent care and/or health care. The <altria.group> domain name is identical or confusingly similar to the ALTRIA mark because the domain name contains the mark in its entirety, differing only by the addition of the top-level domain (TLD) “.group,” which actually adds to confusing similarity because Complainant’s corporate name is “Altria Group, Inc.”
Respondent has no rights or legitimate interests in <altria.group>. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Furthermore, Respondent is using the domain name exclusively to offer the domain name for sale at $1,250 USD.
Respondent has engaged in bad faith registration and use. Using the domain name to offer the domain name for sale in excess of out-of-pocket costs constitutes bad faith under Policy ¶ 4(b)(i). Respondent also registered and used <altria.group> with actual knowledge of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <altria.group> domain name.
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 has registered the ALTRIA trademark with the USPTO (Reg. No. 3,029,629, registered Dec. 13, 2005). The mark is used in connection with conducting applicants shareholder and investor relations, namely providing shareholder record keeping and corporate information and analyses. The mark is also used for the administration of employee benefit and pension plans, namely dividend reinvestment plans, retirement plans, deferred profit-sharing plans, and flexible spending accounts for dependent care and/or health care. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees that Complainant has rights in the ALTRIA mark under Policy ¶ 4(a)(i).
Complainant also argues that the <altria.group> domain name is identical or confusingly similar to the ALTRIA mark. Complainant notes that the domain name contains the mark in its entirety, differing only by the addition of the TLD “.group.” Prior panels have found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms may in fact enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Other panels have stuck to the traditional notion that a top-level domain—even in cases where said domain consists of a word that could conceivably be construed as generic or descriptive—cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark). Therefore, this Panel determines that the “.group” portion of the disputed domain name is irrelevant. Accordingly, the Panel finds that the <altria.group> domain name is identical to the ALTRIA mark under Policy ¶ 4(a)(i).
Complainant has proved 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 (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 argues that Respondent has no rights or legitimate interests in <altria.group>. Complainant argues that Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. The Panel notes that “Futureproof Domains” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, Complainant asserts that Respondent is using the domain name exclusively to offer the domain name for sale at $1,250 USD. The Panel notes that the resolving website displays the message “altria.group is listed for sale for $1,250 USD,” and includes a “BUY IT NOW” link. Offers for sale have not been considered indicative of rights and legitimate interests. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Therefore, the Panel agrees that Respondent’s use of the disputed domain name demonstrates a lack of rights and legitimate interests as it constitutes neither a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use. By using the domain name to offer the domain name for sale, Complainant contends that bad faith under Policy ¶ 4(b)(i) exists. Where evidence is in a record indicating offers for sale, respondents engaging in such offers have been found in bad faith. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). While no other use of the disputed domain is evident, the Panel agrees that Respondent registered the disputed domain and subsequently used it to resolve to such an offer for sale. The Panel agrees that Policy ¶ 4(b)(i) bad faith has been proven.
Complainant also argues that Respondent also registered and used <altria.group> with actual knowledge of Complainant’s trademark. Complainant also contends that in light of the fame and notoriety of Complainant's ALTRIA mark, it is inconceivable that Respondent could have registered the <altria.group> domain name without actual knowledge of Complainant's rights in the mark. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved 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 <altria.group> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 14, 2016
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