Altria Group, Inc. and Altria Group Distribution Company v. Kevin Perkins / United States of America
Claim Number: FA1612001707224
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 Kevin Perkins / United States of America (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altriagroup.us>, registered with Google Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2016; the Forum received payment on December 15, 2016.
On December 14, 2016, Google Inc. confirmed by e-mail to the Forum that the <altriagroup.us> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@altriagroup.us. Also on December 19, 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.
A timely Response was received and determined to be complete on January 9, 2017.
Complainant’s Additional Submission was received on January 13, 2017 and determined to be in compliance with the Rules.
On January 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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 usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
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 December 13, 2005), which demonstrates rights in the mark. Respondent’s <altriagroup.us> combines the ALTRIA mark with the term “group” and the country-code top-level domain (“ccTLD”) “.us,” creating confusing similarity with the mark.
Respondent has no rights or legitimate interests in or to <altriagroup.us>. Respondent was never known by any name or trade name incorporating the domain name. Respondent is not commonly known by the domain name, and has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because the website is inactive.
Respondent registered the domain name in bad faith. Respondent has inactively held the domain since August 8, 2016, demonstrating bad faith under Policy ¶ 4(a)(iii). Respondent also had actual or constructive knowledge of the ALTRIA mark and Complainant’s rights in the mark, also imputing Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent’s domain name is not confusingly similar because it adds the term “group” to the ALTRIA mark.
Respondent agrees that it is not commonly known by the domain name. Respondent intends to use the (currently inactive) website for media related purposes rather than for any commercial gain. Respondent is in the process of learning web design, and has only held the domain name for a few months. Respondent has hired independent contractors to assist in web design, and intends to have a website up and running in March. Respondent intends to use the site as a media outlet pursuant to the First Amendment of the US Constitution.
Respondent did not register the domain name in bad faith merely because it incorporates a trademark of Complainant’s.
Complainant engaged in Reverse Domain Name Hijacking by filing its Complaint.
C. Additional Submissions
Respondent argues the “Altria Group” designation when Complainant’s name is Altria Group, Inc. See Compl., at Attached Ex. 3. Complainant may rely on unregistered trademark rights, and does so here as it relates to the ALTRIA GROUP mark.
Noncommercial use may constitute a lack of rights and legitimate interests. Further, a domain name is not afforded protection under the First Amendment, and the domain here does not make any communicative message, other than drawing a connection with Complainant’s mark. Respondent has also submitted no proof of its intended use.
Further, Respondent’s <philip-morris.us> is involved in a separate proceeding and therefore a pattern of bad faith is present under Policy ¶ 4(b)(ii). See, e.g., Philip Morris USA Inc. v. Kevin Perkins / United States of America, FA1612001707117 (Forum Pending Hearing).
In his additional submission, Respondent contends that even though Complainant has the right to the ALTRIA mark it does not have the right to the “Altria Group” name. Respondent also contends that its failure to use the domain name for a matter of months does not undermine its legitimacy and that cases cited by Complainant are all distinguishable. He repeats his reliance on the First Amendment and argues that Complainant has not refuted its applicability. He asserts his single additional use of a disputed domain name in a case not then yet decided, does not constitute a pattern. He repeats his assertion of reverse domain name hijacking.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Respondent admits that Complainant has rights in its ALTRIA mark for use in its tobacco businesses. He contends, however, that the addition of the word “group” does not give Complainant rights in the term ALTRIA GROUP as used by Complainant. The panel finds this contention is incorrect. Adding the generic term “group” does not negate the confusing similarity between the ALTRIA mark and the ALTRIA GROUP term. See, e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). (The <ocwengroup.com> domain name was confusingly similar to the OCWEN mark).
Complainant has established that the disputed domain name <altriagroup.us> is confusingly similar to Complainant’s ALTRIA mark within the meaning of Policy ¶4(a)(i).
Respondent admits that he is not commonly known by the domain name, and no evidence has been proffered that he has any rights in it.
Because Complainant has therefore made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, the burden is on Respondent to show he does have rights or legitimate interest in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
In attempting to show rights and legitimate interests in the domain name, Respondent contends he intends to use the domain name as a media outlet and thus has shown a legitimate use. His problem, however, is that his mere statement of an intention to make use of the domain name for First Amendment purposes is not enough to meet his burden.
He has failed on two counts. First, he has not presented demonstratable evidence of preparations to build a website having that purpose undertaken before the present dispute arose. That in itself is a failure to meet his burden. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Forum Nov. 7, 2000). Second, he has offered no evidence that he had no alternative to using the disputed domain name to achieve a First Amendment purpose. He has on this ground also failed to meet his burden to show the legitimacy of its use.
Respondent has failed to meet his burden to show he has a right or legitimate interest in use of the domain name within the meaning of Policy ¶4(a)(ii).
Respondent separately registered <Philip-morris.us> as a domain name. The record shows that the PHILIP MORRIS mark is owned by Complainant’s subsidiary Philip Morris USA Inc. That registration was challenged in a separate UDRP proceeding, and the Panel recently upheld that challenge. See, Philip Morris USA Inc. v. Kevin Perkins / United States of America, FA1612001707117 (Forum Jan. 25, 2017).
Respondent contends the two cases do not constitute a pattern. The panel agrees that the two cases do not constitute a pattern, but finds the similarity in the two cases establishes that Respondent had actual knowledge of the rights of the Complaints in their respective marks in the two cases. This knowledge is adequate evidence of Respondent’s bad faith in his registration of the disputed domain name involved in this case. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003).
The evidence establishes that Respondent registered the domain name in bad faith within the meaning of policy ¶4(a)(iii).
All three elements required under the usTLD Policy having been established, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriagroup.us> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: February 2, 2017
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