Altria Group, Inc. and Altria Group Distribution Company v. PROXY PROTECTION LLC
Claim Number: FA1702001718276
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 PROXY PROTECTION LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altria-cannabis.com>, registered with DreamHost, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2017; the Forum received payment on February 23, 2017.
On February 21, 2017, DreamHost, LLC confirmed by e-mail to the Forum that the <altria-cannabis.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 February 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@altria-cannabis.com. Also on February 23, 2017, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005). See Compl., at Attached Ex. 4. Respondent’s <altria-cannabis.com> domain name is confusingly similar as it fully incorporates the ALTRIA mark and adds a hyphen and the generic or descriptive term “cannabis”, along with the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in the <altria-cannabis.com> domain name. Based on the WHOIS information and all other relevant information, Respondent has not demonstrated any connection with the ALTRIA mark, nor has Complainant authorized Respondent or given Respondent permission to use the mark. Respondent also does not use the disputed domain name for any bona fide offering of goods or services because Respondent fails to make an active use of the disputed domain name. See Compl., at Attached Ex. 6.
Respondent registered and uses the <altria-cannabis.com> in bad faith. Respondent’s domain name tarnishes the goodwill and reputation of Complainant, as the term “cannabis” refers to a largely recreational and illegal activity. Additionally, Respondent, as mentioned previously, fails to make any use of the domain name. See Compl. at Attached Ex. 6. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because the disputed domain name prominently uses the ALTRIA mark and differs from it only by the inclusion of a generic word.
B. Respondent
Respondent failed to submit a Response in this proceeding..
1. Complainant is a United States company that is the parent company of four tobacco operating companies.
2. Complainant is the registered owner of the ALTRIA mark, having registered the mark with the United States Patent and Trademark Office( “USPTO”).(e.g., Reg. No. 3,029,629, registered Dec. 13, 2005).
3. Respondent registered the <altria-cannabis.com> domain name on November 17, 2016.
4. Respondent fails to make an active use of the disputed domain name, showing that it has no rights or legitimate interests in the domain name and that the domain name was registered and used in bad faith.
Paragraph 15(a) of the Rules instructs the 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is the parent company for four tobacco operating companies that distribute tobacco products to countries all over the world. Complainant submits that it registered the ALTRIA mark with the USPTO (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005). See Compl., at Attached Ex. 4. Complainant has submitted evidence to that effect which the Panel accepts. Prior UDRP panels have established that registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ALTRIA mark. Complainant argues that Respondent’s <altria-cannabis.com> domain name is confusingly similar to the ALTRIA mark as it includes the entire mark and adds punctuation, the generic word “cannabis”, and a gTLD. Adding punctuation and a generic word has not been found to be sufficient to distinguish a domain name from a trademark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, Panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds that Respondent has not included elements in its domain name that would negate confusing similarity with Complainant’s ALTRIA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ALTRIA trademark and to use it in its domain name, adding a generic word that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <altria-cannabis.com> domain name on November 17, 2016;
(c) Respondent fails to make an active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <altria-cannabis.com> domain name. Where a response is lacking, relevant information to be taken into account in that regard includes the WHOIS and any other submissions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS in the present case identifies “PROXY PROTECTION LLC / PROXY PROTECTION LLC” as the registrant of the domain name. See Compl., at Attached Ex. 2. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the ALTRIA mark. Panels may use these facts as evidence of lacking rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel finds that Respondent is not commonly known by the <altria-cannabis.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant also argues that the disputed domain name resolves to a website that lacks content. Specifically, Complainant argues that Respondent’s domain name fails to redirect users to any active website. See Compl. at Attached Ex. 6. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Accordingly, the Panel agrees with Complainant’s submissions and finds that the <altria-cannabis.com> domain name is not used for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, although 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 ancillary evidence considered under the totality of the circumstances. 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 argues that Respondent registered and uses <altria-cannabis.com> in bad faith because Respondent attempts to tarnish the goodwill of Complainant by using the ALTRIA name in connection with an illegal activity. Complainant argues that the generic term “cannabis” refers to a largely recreational and illegal activity, which, when in conjunction with the ALTRIA mark, might confuse users into believing a connection with Complainant. Prior Panels have used claims of promoting illegal activities as evidence of bad faith. See Kellogg North America Company v. George Clark / 420 group, FA1610001697761 (Forum Nov. 7, 2016) (Respondent uses the disputed domain name to resolve to a web site whose content concerns the promotion of an illegal activity.) Thus, the Panel agrees that Respondent registered and uses <altria-cannabis.com> in bad faith according to Policy ¶ 4(a)(iii).
Secondly, Complainant alleges that Respondent fails to make any use of the disputed domain name. As previously noted above, Complainant contends that Respondent’s domain name fails to resolve to any webpage. See Compl. at Attached Ex. 6. Failure to make an active use of a confusingly similar domain name can evince bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent registered and uses the <altria-cannabis.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s mark when it registered the domain name. However, prior UDRP Panels have disregarded arguments of bad faith based on constructive knowledge of a trademark. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge 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 contends that Respondent must have had actual knowledge of the ALTRIA mark because the disputed domain name prominently uses Complainant’s entire mark and only differs by the inclusion of a generic word. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ALTRIA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-cannabis.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 28, 2017
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