Altria Group, Inc. and Altria Group Distribution Company v. geosum
Claim Number: FA1602001659288
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 Geosum (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altria.website>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2016; the Forum received payment on February 5, 2016.
On February 03, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <altria.website> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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.website. Also on February 5, 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 March 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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”). The mark is used in connection with conducting applicants shareholder and investor relations, administering employee benefit and pension plans, and making charitable and philanthropic donations. The <altria.website> domain name is identical or confusingly similar to the ALTRIA trademark because the only difference between the two is the domain name’s addition of the top-level domain (TLD) “.website.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not actively using the domain name, so it is not possible for Respondent to claim it is making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent is not actively using the domain name, which is bad faith under Policy ¶ 4(a)(iii). Also, Respondent has actual and/or constructive knowledge of Complainant’s trademark rights when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Altria Group, Inc. and Altria Group Distribution Company of Richmond, VA, USA. Complainant is the owner of domestic and international registrations for the mark ALTRIA which it has used continuously since at least as early as early as 2003 in connection with its provision of charitable, financial and philanthropic services.
Respondent is Geosum, of Madrid, Spain. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the <altria.website> was registered on or about June 25, 2015.
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 (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.”).
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, administering employee benefit and pension plans, and making charitable and philanthropic donations. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant also argues that the <altria.website> domain name is identical or confusingly similar to the ALTRIA trademark. Complainant notes that the only difference between the two is the domain name’s addition of the top-level domain (TLD) “.website.” Prior panels have found that a top-level domain—even in cases where the domain consists of a word that may be generic or descriptive—cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. 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). The Panel here finds that the gTLD is inadequate to distinguish the domain name from Complainant’s mark and that the <altria.website> domain name is identical to the ALTRIA trademark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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 (Nat. Arb. 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known as the <altria.website> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ALTRIA mark in domain names. The Panel notes that “Geosum” is listed as the registrant of record for the disputed domain name. Respondent has provided no evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. The Panel finds that Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. 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).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. In support of this claim, Complainant notes the domain name is not actively being used. Complainant has provided screenshot evidence in support of its assertion. As the Panel finds that the disputed domain name is not actively being used, the Panel declines to grant Respondent rights under Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
In support of its argument for bad faith, Complainant reiterates its claim that Respondent is not actively using the <altria.website> domain name. Because the Panel finds that Respondent is not actively using the domain name, the Panel also finds bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <altria.website> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 16, 2016
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