Complainant is Altria Group, Inc. of Richmond, Virginia, United States of America, represented by Arnold & Porter LLP, United States of America.
Respondent is Abbaa Incorporated of Richmond, Virginia, United States of America; Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America.
The disputed domain names (the “Disputed Domain Names”) are <altriagreen.com>, <altriagreen.info>, <altriagreen.net> and <altriagreen.org> and are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On March 7, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 8, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 10, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for a Response was March 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on April 1, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 6, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant, Altria Group, Inc. (“Altria”), is the parent company of Philip Morris USA, Inc.; John Middleton Co.; and U.S. Smokeless Tobacco Company LLC. Altria owns and has made extensive use of the ALTRIA word (the “ALTRIA” mark) and design marks (the “ALTRIA Marks”), which are registered with the United States Patent & Trademark Office, Nos. 3,029,629 and 3,073,900. Altria operates its website at “www.altria.com”.
Information regarding certain of the Disputed Domain Names is as follows:
a) <altriagreen.info> was registered on September 23, 2010;
b) <altriagreen.net> was registered on September 23, 2010;
c) <altriagreen.org> was registered on September 23, 2010; and
d) <altriagreen.com> was registered on September 23, 2010.
Annex G to the Complaint. Within a few weeks of the Disputed Domain Names’ registration, Altria discovered their unauthorized use of the ALTRIA mark in connection with hyperlinks, some of which alluded to financial services, a category of services that Altria offers, and other links related to the types of products offered by Altria’s subsidiaries or such products themselves. Annex E to the Complaint. Upon this discovery, Altria began efforts to terminate the unauthorized use of its marks.
Respondent Domains by Proxy, Inc., (“DPI”) is an Internet-based identity-shielding service. Id. Upon its discovery of the Disputed Domain Names, Altria sent a letter to Respondent, DPI, requesting DPI to refrain from its use of the ALTRIA mark in connection with the Disputed Domain Names (the “Cease and Desist Letter”). Id.
After Complainant sent the Cease and Desist Letter, the websites associated with the Disputed Domain Names all changed their appearance. Any attempt to visit the websites redirects the user to a domain name parking lot.
To date, the Disputed Domain Names continue to incorporate the whole of the ALTRIA mark.
Complainant contends the following:
Complainant makes substantial use of its trademarks, in large part through its website,”www.altria.com”. It has garnered significant goodwill through its use of the ALTRIA mark in connection with its sponsorship of hundreds of tax-exempt, non-profit organizations.
Respondent registered the Disputed Domain Names after Complainant’s trademarks had obtained notoriety, in an effort to capitalize on the recognition of the marks.
Respondent has registered and is using the Disputed Domain Names in bad faith in an effort to confuse potential consumers into believing that the services offered on the websites are endorsed, sponsored, licensed or otherwise affiliated with Altria Group, Inc.
Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent is neither licensees nor affiliates of Complainant.
Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services.
Although the listed administrative contact for Respondent Abbaa Incorporated, Shermon Garrett, responded to Complainant’s October 25, 2010 Cease and Desist Letter by affirming the use of the Disputed Domain Names (and the ALTRIA mark), Respondent has filed no formal Response to Complainant’s contentions.
According to paragraph 4(a) of the Policy, a complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Given the absence of a formal Response in this case, “[i]n considering those three matters a Panel, by virtue of Rule 14(b) of the Rules, is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint”. Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451.
A comparison of each of the Disputed Domain Names with Complainant’s ALTRIA mark yields no doubt the Disputed Domain Names are confusingly similar to Complainant’s marks.
The only difference between each of the Disputed Domain Names and the ALTRIA mark is the appending of (a) the generic term “green” to form a separate, corresponding composite term; and (b) an unrestricted, top-level domain or a generic top-level domain (“.info”, “.net“, “.org” or “.com”).
Respondent’s use of the generic term “green” is a minor variation of the ALTRIA Mark insufficient to avoid user confusion. See, e.g., Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764 (“[A] minor variation, such as [. . .] common, generic or highly descriptive words . . . is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion.” (citing Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286; Burberry Limited v. Domain Admin, WIPO Case No. D2009-0703; Krispy Kreme Doughnuts, Inc. v. John Sharp, WIPO Case No. D2009-0099; MasterCard International Incorporated v. Global Prepaid, WIPO Case No. D2008-2008; HRB Innovations Inc., Express Tax Service Inc. v. Calvin Brown, WIPO Case No. D2008-1072; Dreamworks Animation, LLC v. Creahq, Mike Furlong, WIPO Case No. D2008-0505; Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP, WIPO Case No. D2008-0265; MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878; Blackrock, Inc. v. blackrockfinancialservices.com, WIPO Case No. D2007-1627; F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1347; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064; Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952; Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334; Gerber Childrenswear Inc. v. David Webb, WIPO Case No. D2007-0317; SPX Corporation v. Hevun Diversified Corporation, NAF Claim No. FA 791657; Google Inc. v. Jennifer Burns, NAF Claim No. FA 726096; The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766; Napster, Inc. v. Giovanni Vinscani, WIPO Case No. D2005-0531; Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411; Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824; Lockheed Martin Corporation v. Deborah Teramani, WIPO Case No. D2004-0836 ; National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491; Lane-Labs USA, Inc. v. Powell Productions, NAF Claim No. FA 155896; and particularly Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Claim No. FA 117876).
Moreover, the use of top-level domains is irrelevant to paragraph 4(a)’s “confusing similarity” inquiry and is thus disregarded. Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764 (concluding that <altriacannabis.com> and <altriamarijuana.com> were “confusingly similar”).
Although complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests. Id. Upon such a showing, the burden of production shifts to Respondent to demonstrate its rights or legitimated interests in the Disputed Domain Names. Id. Failure to satisfy its burden of production is sufficient for a determination in favor of Complainant, pursuant to 4(a)(ii) of the UDRP. Id. (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Question 2.1.)
Complainant’s pleadings are replete with statements disaffirming any connection, affiliation, association or variation of authority entitling the Respondent to make any use of the ALTRIA mark. The “fanciful” nature of the ALTRIA mark is well-documented. See, e.g., Altria Group, Inc. v. Steven Company, supra. The record contains no indication that (a) Respondent is known by and of the Disputed Domain Names or the ALTRIA mark; (b) Respondent is using the Disputed Domain Names in connection with a bona fide offering of goods or services; or (c) the Disputed Domain Names constitute a legitimate, noncommercial fair use.
The rules governing this Panel permit the use of negative inferences in light of Respondent’s default. See Id. (citing WIPO Overview 2.0, Question 4.6). Such an inference is especially apt in this case because Respondent has offered no responsive showing of a right or legitimate interest in the Disputed Domain Names. Id.
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim by Respondent, were it to have made one, to any of the Disputed Domain Names under paragraph 4(c) of the Policy.
In light of the notoriety of the ALTRIA mark, Respondent’s pairing of the ALTRIA mark with the generic term “green”; Respondent’s initial use of the Disputed Domain Names to offer links to services or products in connection with those offered by Complainant; and its post-Cease and Desist Letter acts of subterfuge, including its transfer of the site to a domain name parking-lot, Annex G to the Complaint, leads this Panel to conclude that Respondent’s registration and use of the Disputed Domain Names is to “intentionally attract, for commercial gain, Internet users to [Respondent’s] web site [. . .] by creating a likelihood of confusion with [Complainant’s ALTRIA mark] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site”. See Altria Group, Inc. v. Steven Company, supra (citing Policy, paragraph 4(b)(iv)) (brackets in original).
Accordingly, the Panel finds that Complainant has met its burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by Complainant.
The Disputed Domain Names, <altriagreen.com>, <altriagreen.info>, <altriagreen.net> and <altriagreen.org>, are ordered transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: April 20, 2011