WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altria Group, Inc. and Altria Group Distribution Company v. KKK

Case No. D2019-2778

1. The Parties

The Complainants are Altria Group, Inc., United States of America (“United States”) and Altria Group Distribution Company, United States, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is KKK, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <philipmorrisaltria.com> is registered with HANGANG Systems Inc. dba Doregi.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2019. On November 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 22, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On November 24, 2019, the Respondent requested that Korean be the language of the proceeding. On November 28, 2019, the Complainant submitted an amended Complaint requesting that English be the language of the proceeding.

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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on December 24, 2019, that it would proceed to panel appointment.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 27, 2020. 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.

4. Factual Background

The Complainant Altria Group, Inc. (“Altria”) is the parent company of four tobacco operating companies, including Philip Morris USA Inc. (“PM USA”), U.S. Smokeless Tobacco Company LLC, John Middleton Co., and Nat Sherman. Because Altria owns PM USA, this Panel will refer to Altria and PM USA together as the Complainant.

The Complainant has continuously used its ALTRIA trademark for numerous years. The Complainant owns United States trademark registrations for the marks ALTRIA and ALTRIA and design (e.g., registration number 3029629, registered on December 13, 2005), and offers various services under its ALTRIA trademark, including charitable, financial, and philanthropic services, as well as for tobacco product distribution, sales, and consumer engagement in the field of tobacco products. The Complainant owns and uses the domain name <altria.com> for website to provide information about the company.

PM USA has used PHILIP MORRIS continuously throughout the United States for over a century, and the name Philip Morris is widely recognized as referring to the Complainant and its tobacco products. The Complainant has registered numerous domain names incorporating Philip Morris, including <philipmorris.com>, <philipmorris.net>, <philipmorris.org>, and <philipmorris.info> for websites to provide information about the company, and the net revenues for PM USA exceed USD 22 billion.

The disputed domain name <philipmorrisaltria.com> was registered by the Respondent on September 6, 2019, and the disputed domain name resolves to a blank page without any content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademark ALTRIA or PHILIP MORRIS; (ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Altria” or “Philip Morris.”

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent (i) intentionally registered and is using the disputed domain name to attract Internet users to visit the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source or affiliation of the Respondent’s website, and (ii) was fully aware of the Complainant’s reputation and well-known trademarks.

B. Respondent

The Respondent did not submit any formal Response but sent two email communications to the Center, stating, in pertinent part, that the Respondent wishes Korean to be the language of the proceeding, and indicating that the Respondent is willing to settle the matter.

6. Discussion and Findings

The Panel notes that the Respondent did not submit any arguments on the merits. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

Paragraph 15(a) of the Rules instructs that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 (“Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.”); see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the Parties, subject to the authority of the Panel to determine otherwise.

In this case, the language of the Registration Agreement is Korean. However, in determining the language of the proceeding in the present case, pursuant to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points:

(i) On November 25, 2019, having received the Center’s communication regarding the language of the proceeding in English and Korean, the Respondent sent an email to the Complainant in English requesting the dispute be settled with a cost of USD 2,500 via Escrow.com (Annex 9 to the Amended Complaint);
(ii) the Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the parties’ respective arguments;
(iii) ordering the Complainant to translate the Complaint in Korean will cause undue delay and expense in the process.

In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

B. Identical or Confusingly Similar

The disputed domain name <philipmorrisaltria.com> incorporates the Complainant’s PHILIP MORRIS and ALTRIA trademarks in their entirety. Although the Complainant has not submitted evidence of a registered PHILIP MORRIS trademark, it is widely used in commerce and well-established that such use may give rise to trademark rights with the same protections as a registered trademark. See Philip Morris USA Inc. v Elijah Etame, WIPO Case No. D2016-0968 (the Panel states that “while the [Philip Morris] Mark does not correspond to a currently registered trademark, the Mark nevertheless continues to operate as a clear source of origin of certain of Complainant’s products, and on that basis operates as a common law trademark in association with the same, for the purposes of the Policy. Accordingly, the Panel finds that Complainant has trademark rights in the Mark.”).

In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0; see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” Moreover, the generic Top-Level Domain (“gTLD”), such as “.com,” is normally disregarded during the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the disputed domain name, gTLD “.com,” is attached to the Complainant’s PHILIP MORRIS and ALTRIA trademarks. However, the mere addition of the gTLD “.com” does not eliminate confusing similarity because gTLD is viewed as a standard registration requirement as the “use of a gTLD is required of domain name registrants.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademarks to the Respondent. The Complainant has not authorized or permitted the Respondent to use its ALTRIA or PHILIP MORRIS trademarks. The Panel thus finds that the Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name, which wholly incorporate the Complainant’s marks. F.Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.

Furthermore, the Panel agrees that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence, which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Altria” or “Philip Morris.”

Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

Moreover, by failing to respond substantively to the Complainant’s position, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.

In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

It is generally accepted under the Policy that, for a bad faith registration, (i) the respondent must have been aware of the complainant or its trademark when it registered the disputed domain name, and (ii) the registration must in some way have been targeted at the complainant or its trademark, for example, by seeking to capitalize on it. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954.

Given that ALTRIA and PHILIP MORRIS are the famous trademarks worldwide, it is highly likely that the Respondent was aware of the rights the Complainant has in the trademarks, and the value of the said trademarks, at the point of the registration of the disputed domain name. The UDRP panel previously held that “registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.” See Allianz, Compañia de Seguros v Reaseguros S.A. v. John Michael, supra.

Moreover, even though the Respondent has made no use of the disputed domain name, the fact that the disputed domain name is confusingly similar to the Complainant’s trademarks shows that the Respondent intends to cause confusion, mistake and deception using the disputed domain name. Accordingly, “any use of the disputed domain name for an actual website could only be in bad faith.” See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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 <philipmorrisaltria.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: February 10, 2020