Altria Group, Inc. and Altria Group Distribution Company v. CLIFF FLEET
Claim Number: FA1705001733486
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 CLIFF FLEET (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altriagroupincs.com>, registered with eNom, 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 May 26, 2017; the Forum received payment May 30, 2017.
On May 30, 2017, eNom, LLC confirmed by e-mail to the Forum that the <altriagroupincs.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC verified that Respondent is bound by the eNom, 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 June 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@altriagroupincs.com. Also on June 2, 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 June 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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 name be transferred from Respondent to Complainant.
A. Complainant’s Allegations in this Proceeding:
Complainant is the parent company to five tobacco-operating companies that manufacture and distribute a wide variety of tobacco products. These companies include the manufacturers of the MARLBORO, SKOAL, and BLACK & MILD brand names. Complainant registered its ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 4. Respondent’s <altriagroupincs.com> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the generic terms “group” and “incs” and the generic top-level domain name (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <altriagroupincs.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ALTRIA mark in any way and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. 2 (WHOIS registrant information). Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) because Respondent failed to make an active use of the disputed domain name.
Respondent registered and is holding passively the <altriagroupincs.com> domain name in bad faith. Respondent’s bad faith is shown through its actual knowledge of Complainant’s rights in the ALTRIA mark at the time of registration, as well as Respondent’s failure to make an active use of the resolving website for the disputed domain name.
B. Respondent’s Contentions in Response:
Respondent did not submit a Response in this proceeding. However, the Panel notes that Respondent registered the disputed domain name January 13, 2017.
Complainant established rights and legitimate interests in its protected mark.
Respondent has no rights or legitimate interests in Complainant’s mark or the disputed domain name containing that mark in its entirety.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark and registered that disputed domain name and held it passively 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 registered its ALTRIA mark with the USPTO (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 4. A USPTO registration confers 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). Thus, the Panel finds that Complainant has rights in the ALTRIA mark under Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <altriagroupincs.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic terms “group” and “incs” and the gTLD “.com.” The addition of generic terms and gTLD are not considered sufficient to distinguish a mark in a manner that would overcome a finding of confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding addition of a generic term and gTLD insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Respondent’s <altriagroupincs.com> domain name is confusingly similar to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is 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 asserts that Respondent has no rights or legitimate interests in the <altriagroupincs.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ALTRIA mark in any way. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record listed “WHOIS AGENT”, as the registrant prior to the lifting of the privacy service. See Compl., at Attached Ex. 2. After lifting the service, the WHOIS information provided that the registrant is “CLIFF FLEET.” See Amended Compl., at Attached Ex. 2. Therefore, the Panel finds that Respondent is not commonly known by <altriagroupincs.com> per Policy ¶ 4(c)(ii).
Next, Complainant urges that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpage is inactive. Such non-use cannot be construed as a bona fide offering of goods or services or 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 [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).”). Complainant has provided a screenshot of Respondent’s inactive webpage displaying a “404 Error” notice. See Compl., at Attached Ex. 7. Therefore, the Panel finds that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the <altriagroupincs.com> domain name under Policy ¶¶ 4(c)(i) or (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 name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—as long as Complainant shows bad faith use and registration in some manner. 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 given the fame and notoriety of Complainant’s ALTRIA mark, it is inconceivable that Respondent could have registered the <altriagroupincs.com> domain name without actual or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name 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). A respondent is presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s ALTRIA mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 2001. See Compl., at Attached Ex. 4. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when Respondent registered <altriagroupincs.com> and thereafter held it passively.
Complainant also claims that Respondent is not making an active use of the resolving webpage for the <altriagroupincs.com> domain name. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage can evince bad faith under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant provided screenshot evidence of the disputed domain name’s inactive resolving webpage. See Compl., at Attached Ex. 7. Based on this evidence, the Panel finds that Respondent registered and passively held the disputed domain name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent acted in bad faith when Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and then held that domain passively; 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 <altriagroupincs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 10, 2017
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