Altria Group, Inc. v. Stacey Scott / Baldwin Inc
Claim Number: FA1410001584163
Complainant is Altria Group, Inc. (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Stacey Scott / Baldwin Inc (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altriavaporizer.com> and <altriaheatstick.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2014; the National Arbitration Forum received payment on October 10, 2014.
On October 13, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <altriavaporizer.com> and <altriaheatstick.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2014 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@altriavaporizer.com, postmaster@altriaheatstick.com. Also on October 15, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 contends as follows:
Complainant has rights in the ALTRIA mark as demonstrated by valid trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,029,626, registered Dec. 13, 2005). Complainant uses the ALTRIA mark in connection with charitable services, providing information on tobacco cessation support, and with tobacco production and distribution. The <altriavaporizer.com> and <altriaheatstick.com> domain names are confusingly similar to the ALTRIA mark, as the added terms are evocative of Complainant’s tobacco related products.
Respondent has no rights or legitimate interests in the domain names. Respondent has never been known by the <altriavaporizer.com> or <altriaheatstick.com> names. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, nor has it made a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a holdings page, where the only content promotes the sale of the respective disputed domain name.
Respondent has engaged in bad faith registration and use of the <altriavaporizer.com> and <altriaheatstick.com> domain names. Respondent has failed to make an active use of the disputed domain names. Instead, the names resolve to merely advertise the sale of the respective domain name, which is indicative of Policy ¶ 4(b)(i) bad faith. Further, Respondent undoubtedly was aware of Complainant and its ALTRIA mark as the domain names contain the mark as well as terms suggesting Complainant’s tobacco related products. Such knowledge shows Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALTRIA mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademark.
Respondent’s at-issue domain names each address a webpage that advertises the webpage’s domain name is for sale.
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(e), 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 (Nat. Arb. 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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the ALTRIA mark through its USPTO trademark registration. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
In forming the at-issue domain names Respondent adds the terms “vaporizer” and “heatstick” to Complainant trademark and then appends the generic top-level domain “.com” thereto. The terms each suggest products covered by the ALTRIA trademark; the top-level domain “.com” adds no distinguishing value. Therefore, the Panel finds that the <altriavaporizer.com> and <altriaheatstick.com> domain names are each confusingly similar to Complainant’s ALTRIA mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also, United Services AutomobileAssociation v. Michele Dinoia a/k/a SZK.com, FA 497783 (Nat. Arb. Forum July 22, 2005) (“Respondent incorporates Complainant’s entire USAA mark with the addition of “insurance,” a generic term describing the business in which Complainant engages, and the generic top level domain ‘.com.’ Such minor changes fail to significantly distinguish Respondent’s domain name from Complainant’s USAA mark pursuant to Policy ¶ 4(a)(i).”); see also, Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at-issue domain names.
WHOIS information for the at-issue domain names lists “Stacey Scott” of “Baldwin Inc” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by either the <altriavaporizer.com> or the <altriaheatstick.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by either of the at-issue domain names pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Furthermore, the at-issue domain names each address a
holding page where the only promoted content advertises the sale of the
associated domain name. Respondent’s willingness to sell a confusingly similar
domain name suggests
Respondent lacks any rights or legitimate interests in the at-issue domain
name. See, e.g., Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb.
Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain
name supports findings of a lack of rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also, Mothers Against Drunk
Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that
it lacked rights or legitimate interests in the domain name). Importantly, Respondent’s use of the at-issue domain names only to
advertise the sale of such domain names amounts to neither a protected Policy ¶
4(c)(i) bona fide offering of goods or services, nor a Policy ¶
4(c)(iii) legitimate noncommercial or fair use.
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
Respondent has failed to make an active use of the disputed domain names, but instead uses the at-issue domain names to advertise the respective domain name for sale. Respondent’s willingness to sell a confusingly similar domain name suggests Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); Globosat Programadora Ltda v. Artmidia Comunicação Criação E Arte Ltda., D2000-0605 (WIPO Sept. 13, 2000) (“[T]he fact that almost all the domain names registered by the respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that… Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration.”).
Finally, Respondent registered the <altriavaporizer.com> and <altriaheatstick.com> domain names knowing that Complainant had trademark rights in the ALTRIA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporating terms suggesting the trademark, as well as the trademark itself, in forming the at-issue domain names. Given the forgoing, the Panel concludes that Respondent intentionally registered the at-issue domain names precisely to improperly exploit the domain names’ trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <altriavaporizer.com> and <altriaheatstick.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriavaporizer.com> and <altriaheatstick.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 12, 2014
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