Altria Group, Inc. and Altria Group Distribution Company v. ZhangXin
Claim Number: FA1704001729134
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 ZhangXin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altria.space> and <altria.tech>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 Forum electronically on April 27, 2017; the Forum received payment on May 3, 2017. The Complaint was received in both Chinese and English.
On April 28, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <altria.space> and <altria.tech> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 May 8, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 30, 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.space, postmaster@altria.tech. Also on May 8, 2017, the Chinese language 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 June 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Furthermore, pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and absent a Response finds that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Altria Group, Inc. is the parent company of five tobacco operating companies with business based in Richmond, Virginia, USA. In connection with this business, Complainant uses the ALTRIA mark to promote its goods and services.
Complainant has rights in the ALTRIA mark based upon the mark’s registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,029,629, registered Dec. 13, 2005).
Respondent’s domain names are identical to Complainant’s mark as each contains the mark in its entirety and appends a generic top-level-domain (“gTLD”) of either “.space” or “.tech.”
Respondent lacks rights and legitimate interests in the at-issue domain names. Respondent is not commonly known by either domain name and Complainant has not authorized Respondent to register domain names reflecting the ALTRIA mark. Further, Respondent fails to use the disputed domain names in connection with any bona fide offering of goods or services, or for legitimate noncommercial or fair uses. Instead, the disputed domain names fail to resolve to active websites.
Respondent registered and is using the disputed domain names in bad faith. Respondent registered multiple websites reflecting Complainant’s marks. Further, Respondent simply inactively holds the disputed domain names, as it doesn’t use them for any purpose. Finally, Respondent had actual knowledge of Complainant’s rights in the ALTRIA mark at time of registration because the only distinctive term in the domain names is the ALTRIA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALTRIA mark as evidenced by its registration of such mark with the USPTO and otherwise.
Complainant’s rights in the ALTRIA mark existed prior to Respondent’s registration of the at-issue domain names.
The at-issue domain names are each identical to Complainant’s ALTRIA trademark.
Respondent makes no active use of either at-issue domain name.
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 (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’s ownership of a USPTO trademark registration for the ALTRIA trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO). Likewise Complainant’s additional worldwide registrations of its ALTRIA mark also demonstrate Complainant’s rights under Policy ¶ 4(a)(i). See also Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s at-issue domain names contain Complainant’s entire ALTRIA trademark followed by a top level domain name of either “.space” or “tech.” The addition of a syntactically required top-level domain name is irrelevant to Policy 4(a)(i) analysis. Therefore the Panel finds that Respondent’s <altria.space> and <altria.tech> domain names are each identical to Complainant’s ALTRIA trademark. See Kellogg North America Company v. Lakhvinder Singh, FA 1686534 (Forum Sept. 20, 2013) (“.global is a generic top level domain and does not distinguish [<kelloggs.global> and <kellogg.global>] from the Complainant’s KELLOGG’s mark.”).
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 (Forum Aug. 18, 2006). Here, 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) circumstance 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 <altria.space> and <altria.tech> domain names lists “ZhangXin” as their registrant. There is no evidence before the Panel which otherwise indicates that Respondent is known by either at-issue domain name and Respondent makes no claim that it is known by either of the domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <altria.space> or the <altria.tech> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Neither at-issue domain name addresses an active webpage or is shown to serve any legitimate purpose. Using the trademark identical <altria.space> and <altria.tech> domain names in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). 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).”).
Given the foregoing, Complainant has met its burden under Policy ¶ 4(a)(ii) and shows conclusively that Respondent lacks rights or interests in either of the at-issue domain names.
The at-issue domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent exhibits a pattern of bad faith domain name registration by registering multiple domain names that are identical to Complainant’s ALTRIA trademark. Respondent registered its two at-issue identical domain names two days apart using different generic top levels. Respondent’s registration of multiple domain names that are identical to Complainant’s trademark suggests a pattern of bad faith registration per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Additionally, Respondent registered the <altria.space> and <altria.tech> domain names with actual knowledge of Complainant’s ALTRIA trademark. Respondent’s knowledge of Complainant’s mark is inferred from the notoriety of Complainant’s trademark and the fanciful nature of the mark. Respondent’s actual knowledge of Complainant’s rights in the ALTRIA mark prior to its registering the <altria.space> and <altria.tech> domain names further shows that Respondent registered and used the at-issue domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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"); 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).
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.space> and <altria.tech> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 4, 2017
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