Altria Group, Inc. and Altria Group Distribution Company v. Ernie Villa
Claim Number: FA1604001668847
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 Ernie Villa (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 4, 2016; the Forum received payment April 6, 2016.
On April 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@altriamedicalfarms.com, postmaster@altriamedical.com, postmaster@altriafarms.com. Also on April 6, 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 April 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the ALTRIA mark in connection with its tobacco product operating businesses. Complainant registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,029,629, registered December 13, 2005), which demonstrates rights in the mark. See Compl., at Attached Ex. 4. Respondent’s <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names are confusingly similar to the ALTRIA mark as they incorporate the mark in its entirety, add the generic words “medical,” and/or “farms,” and include the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names. Rather, Respondent is engaging in inactive holding of the disputed domain names. See Compl., at Attached Ex. 7.
Complainant alleges that Respondent’s passive holding of the disputed domain names supports findings that Respondent is using the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names in bad faith. Respondent’s inactive holding of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Complainant also alleges that Respondent must have had constructive or actual notice of Complainant's rights in the ALTRIA mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. Complainant also urges that Respondent’s registration and use of the disputed domain names was done in a bad faith attempt to tarnish the goodwill associated with the ALTRIA mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names January 26, 2016, some eleven years after Complainant has shown legal rights in the mark contained in its entirety within each of the disputed domain names.
FINDINGS:
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain names.
Respondent has no such rights or legitimate interests in the protected mark or the disputed domain names.
Respondent registered three domain names that are confusingly similar to Complainant’s protected mark.
Respondent registered and passively held the disputed domain names 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses its ALTRIA mark in connection with its tobacco product operating businesses. Complainant registered the ALTRIA mark with the USPTO (e.g., Reg. No. 3,029,629, registered December 13, 2005), which demonstrates rights in the mark under the Policy. See Compl., at Attached Ex. 4. Panels have found registration with the USPTO to be sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, this Panel finds that Complainant demonstrated rights in the ALTRIA mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names all are confusingly similar to the ALTRIA mark as they incorporate the mark in its entirety, and add the generic words “medical,” or “farms,” and include the gTLD “.com.” Other Panels agree that such alterations to marks do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). This Panel agrees that Respondent’s <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names are confusingly similar to the ALTRIA mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered disputed domain names that are
confusingly similar to Complainant’s protected mark; Complainant satisfied the
elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names. First, Complainant asserts that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information regarding the disputed domain names lists “Ernie Villa” as registrant. Complainant also asserts that it has not given Respondent permission to use its ALTRIA mark. The Panel notes as well that Respondent did not submit a response in this proceeding. Therefore, in light of the available evidence, the Panel notes no support for any finding that Respondent is commonly known by the disputed 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 through the <altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names. Complainant contends that the disputed domain names do not resolve to active websites. The <altriamedicalfarms.com> domain name resolves to a website that says “website coming soon,” and the <altriamedical.com> and <altriafarms.com> domain names resolve to a website that contains: “This page can’t be displayed.” See Compl., at Attached Ex. 7. Panels have found that the inactive holding of domain names without demonstrable preparations for use not to 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 not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make any contentions that 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 by a totality of the circumstances from ancillary allegations. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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).
Complainant contends that Respondent’s inactive holding of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Complainant claims that the <altriamedicalfarms.com> domain name resolves to a website that says “website coming soon,” and the <altriamedical.com> and <altriafarms.com> domain names resolve to a website that says: “This page can’t be displayed.” See Compl., at Attached Ex. 7. Panels have found inactive holding of a disputed domain name to qualify as 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). Therefore, this Panel also finds that Respondent’s inactive holding of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent must have had constructive or actual notice of Complainant's rights in the ALTRIA mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice alone usually is insufficient to support a finding of bad faith, the Panel here finds that the evidence permits an inference that Respondent had actual notice of Complainant's mark and thus registered and passively held the disputed domain names 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 mark is not only registered to Complainant, it is not a common term having common meaning. Respondent’s use of it in three domain names permits an inference that Complainant’s protected mark is the inspiration for the three domain names.
Finally, Complainant alleges that Respondent’s registration and use of the disputed domain names was done in a bad faith attempt to tarnish the goodwill associated with the ALTRIA mark. Complainant alleges that Respondent’s coupling of the ALTIRA trademark with the terms “medical” and “farms” connotes a connection between Complainant’s mark and marijuana, which Complainant contends is a placement of the mark in an unsavory context. The Panel finds that Respondent’s passive holding alone supports findings of bad faith registration and use. Respondent registered and held the disputed domain names referencing “medical” associations. The Panel does not make findings that Respondent made a deliberate attempt to devalue Complainant’s mark by associating it with things that dilute or damage its commercial value because Complainant offered insufficient proof to support any such findings relative to the claim of damage from association with a drug. Such proof may be possible, along with proof that Respondent opposes tobacco use in general, under Policy ¶ 4(a)(iii), but Complainant did not sufficiently do so here. But See Google Inc. v. Java Den Web Solutions, FA 1355351 (Forum Mar. 20, 2011), (“tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held three disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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<altriamedicalfarms.com>, <altriamedical.com>, and <altriafarms.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 12, 2016.
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