Complainant is Altria Group, Inc. and Altria Group Distribution Company of Richmond, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is sb ani of Jersy, New Jersey, United States.
The disputed domain name <altriaphilipmorris.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2019.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on April 3, 2019. 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.
On April 16, 2019, the Center informed the Panel that Respondent had contacted the Center and that Respondent wanted to submit a Response. Since the Response had been due March 24, 2019, any submission now would be considered a late Response. The Center did not receive a Response before this decision was filed. Even if a late Response had been filed, the Panel has the discretion whether to accept it pursuant to paragraphs 10 and 12 of the Rules. On April 17 and 24, 2019, Respondent sent email communications to the Center.
Complainant Altria (“Altria”) is the parent company of several tobacco operating companies, including Philip Morris USA Inc (“PM”). Since Altria owns PM, this Panel will refer to Altria and PM together as Complainant.
Complainant has continuously used its ALTRIA trademark for numerous years. Complainant owns United States trademark registrations for the marks ALTRIA, and ALTRIA and Design, for charitable, financial, and philanthropic services, as well as for tobacco product distribution services and consumer engagement services in the field of tobacco products. Complainant owns <altria.com>, and operates a website, “www.altria.com”, which provides information about the company.
PM is the largest tobacco company in the United States, and has used PHILIP MORRIS continuously since 1846 for consumers to identify the source of its tobacco products. Complainant does not directly hold trademark registrations for its tobacco products, but it is well-established that such use may give rise to trademark rights with the same protections as a registered mark. Complainant has registered various domain names incorporating “Philip Morris”, including <philipmorris.com>, which was registered on August 8, 1995, and resolves to the home page for the company.
Respondent registered the disputed domain name on January 10, 2019. The domain resolves to an inactive holding page that states “website coming soon!”
Complainant asserts that it has rights in the ALTRIA marks. It also asserts common law rights in the PHILIP MORRIS trademark, which it has used continuously for over 100 years for its company trade name and for its tobacco products, and that the mark is well-known and famous. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of both the ALTRIA and PHILIP MORRIS marks in their entirety. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions before the Response due date. On April 17 and 24, 2019, Respondent sent email communications to the Center stating that it disagrees with the claims made by Complainant, that the redirection of the disputed domain name is due to the Registrar, that the disputed domain name simply states “website coming soon” and does not sell any products of or competing with Complainant’s, and that Respondent would need an additional 20 days to respond.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel notes Respondent’s allegations in its email communications submitted after the notification of Panel appointment and considers that there is no basis to grant Respondent another opportunity to file a Response and that a delay in the present proceeding would be unnecessary. Accordingly, the Panel has determined that these filings are not admissible.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has rights to the ALTRIA trademark through various trademark registrations.
Complainant has used “Philip Morris” continuously for over a century to refer to PM and to its tobacco products. Consumers recognize “Philip Morris” as uniquely associated with PM and its tobacco products. Accordingly, Complainant has established common law trademark rights in the PHILIP MORRIS mark. Such common law rights in a well-known and famous mark are sufficient to support a complaint under the Policy. Previous UDRP panels have found common law rights in the PHILIP MORRIS mark. See, e.g., Philip Morris USA Inc. v Registration Private, Domains by Proxy, LLC/Kassie Grecula, WIPO Case No. D2018-1264; Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840.
The disputed domain name is confusingly similar to the ALTRIA and PHILIP MORRIS trademarks. It contains the ALTRIA and PHILIP MORRIS marks in their entirety.
Accordingly, the Panel finds that Complainant has rights in the ALTRIA mark and common law rights in the PHILIP MORRIS mark, and that the disputed domain name is confusingly similar to these marks, which satisfies the first element of paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant alleges it has exclusive rights in the ALTRIA and PHILIP MORRIS marks and has not authorized Respondent to register and use the disputed domain name. Complainant states Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the ALTRIA and PHILIP MORRIS marks. Complainant also alleges that Respondent is not known under the marks, and Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain name or a bona fide offering of goods or services under the marks. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent has not provided any evidence in its own favor.
In addition, the Panel notes that the composition of the disputed domain name consists of two of Complainant’s trademarks.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. Complainant has United States registrations for its ALTRIA marks.
PM is one of the largest tobacco company in the United States, and PM has used the PHILIP MORRIS mark continuously since 1846 for consumers to identify the source of its tobacco products. All of this occurred before Respondent registered the disputed domain name on January 10, 2019. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s marks when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Respondent’s domain name reverts to a web page that simply says “website coming soon!”. It does not make active use of Complainant’s marks. However, bad faith can be found in a situation involving a passive holding of the domain name registration. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel considered the specific circumstances of the case, including the following:
(i) the Complainant’s trademark has a strong reputation and is widely known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) and (iv) …
and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
In addition, the Panel notes that the disputed domain name is a combination of two of Complainant’s trademarks.
Consequently, the Panel finds that the evidence in the record is sufficient to establish that Respondent has registered and used the disputed domain name in bad faith, and thus Complainant meets the third criterion of paragraph 4(a) of the Policy.
Finally, it should be noted that there are a long line of UDRP decisions that found that the Complainant has rights in the PHILIP MORRIS mark and that the disputed domain names are confusingly similar to Complainant’s marks, that the respondents had no rights or legitimate interests in the disputed domain names, and that the respondents registered and used the disputed domain names in bad faith, and resulted in transfer of the disputed domain names to Complainant. See, e.g., Philip Morris USA Inc. v. Domains by Proxy / Ray A Board, WIPO Case No. D2016-0840. This decision is consistent with this line of UDRP decisions.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <altriaphilipmorris.com> be transferred to the Complainant.
Sandra A. Sellers
Sole Panelist
Date: April 17, 2019