WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altria Group, Inc. and Philip Morris USA Inc. v. Leonard Di Bari

Case No. D2014-0181

1. The Parties

The Complainants are Altria Group, Inc. of Richmond, Virginia, United States of America and Philip Morris USA Inc. of Richmond, Virginia, represented by Arnold & Porter, United States of America.

The Respondent is Leonard Di Bari, of Glendale, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names <altria-ecigs.com>, <marlboro-light-ecigs.com>, <marlborolight-ecigs.com>, <marlboro-lights-ecigs.com>, <marlborolights-ecigs.com> and <marlbororedbox-ecigs.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2014. On February 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2014.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 13, 2014. 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 paragraph 7 of the Rules.

Along with the Complaint, the Complainants filed a Request to Consolidate because the registrant of all of the Disputed Domain Names is the Respondent Leonard Di Bari although there are two different Complainants, one being the parent company and the other, the wholly owned subsidiary of the parent company. In addition, each of the Disputed Domain Names also includes the word “ecigs”, a common abbreviation for electronic cigarettes.

Pursuant to paragraph 10(e) of the Rules, entitled “General Powers of the Panel”, which provides that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”, the Panel has decided to allow, and has granted, the Complainants’ Request to Consolidate.

The Panel concludes that it is appropriate and efficient to permit the consolidation, particularly because the Complainants are a parent company and wholly-owned subsidiary and both have a common interest in the proceeding. Further, the Respondent is the registrant of all of the Disputed Domain Names and the Registrar for each of the Disputed Domain Names is the same. Other UDRP panels have determined that consolidation under similar circumstances is appropriate. See, e.g., Trednet and Direct Distribution Intl. Ltd. v. WhoisGuardNamecheap/Bodypower, WIPO Case No. D2012-2001 (filing of complaint by two entities which owned trademark registrations for names infringed by respondent was proper; complainants, which had a contractual relationship, had a common interest in the proceeding); NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 (proper for complaint filed by complainants NFL teams and NFL Properties, which is owned by individual teams, to submit complaint against infringer of several team names).

4. Factual Background

The Complainant Altria Group, Inc. (the “Complainant Altria”) is the parent company of the Complainant Philip Morris USA, Inc. (the “Complainant PM USA”) (collectively “the Complainants”). The Complainant Altria has made extensive use of the ALTRIA trademark and ALTRIA design trademark (the “ALTRIA MARK”) since 1903. The Complainant Altria received a trademark registration for the ALTRIA Mark from the United States Patent and Trademark Office (“USPTO”) in 2005. In addition to conducting shareholder and investor relations and administering employee benefit and pension plans under that trademark and name, the ALTRIA Mark has become very well-known through Altria’s sponsorship of numerous charitable organizations and its prominent support of the arts.

The Complainant Altria has several wholly-owned subsidiaries. Among these is the Complainant PM USA, which is the largest tobacco company in the United States. The Complainant PM USA owns and makes extensive use of the MARLBORO trademark (the “MARLBORO Mark”) which the Complainant PM USA has used since 1883 and for which it received a trademark registration with the USPTO for tobacco products in 1908. The Complainant PM USA also registered the MARLBORO Mark in many other countries throughout the world. Through extensive and widespread use, the MARLBORO Mark has become one of the most famous and valuable trademarks in the world.

The Complainant Altria maintains a website at “www.altria.com” that provides information about its mission, its subsidiaries, and the subsidiaries’ brands, all under the ALTRIA Mark. The Complainant PM USA maintains a website at “www.marlboro.com” that provides information about the Complainant PM USA, the products it markets and sells under the MARLBORO Mark, and special offers to age-verified adult smokers 21 years of age or older.

The Disputed Domain Names were all registered on August 26, 2013. The Disputed Domain Names resolve to websites that are parking pages that contain sponsored pay-per-click hyperlinks to a variety of third party sites providing goods and/or services.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Names are confusingly similar to the Complainants’ trademarks.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

- The Disputed Domain Names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order for the Complainants to prevail and have the Disputed Domain Names transferred, the Complainants must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names are nearly identical and are confusingly similar to the Complainants’ marks.

Numerous UDRP panels have determined that the ALTRIA Mark is famous. See, e.g., Altria Group, Inc. v. Abbaa Inc./Domains by Proxy, Inc., WIPO Case No. D2011-0420 (citing the “notoriety of the Altria mark”); Altria Group, Inc. v. Steven Co., WIPO Case No. D2010-1762 (noting the “widespread use and recognition” of the ALTRIA trademark); Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764 (emphasizing the“notoriety, reputation and fame” that the ALTRIA mark has achieved in the United States).

Numerous UDRP panels have also determined that the MARLBORO Mark is famous. See, e.g., Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306 (“As has been accepted by numerous panels previously, the MARLBORO trademark is famous world-wide”); Philip Morris USA Inc. v. PrivacyProtect.org / Paundrayana W, WIPO Case No. D2012-0660 (“Respondent creates a likelihood of confusion with the Complainant’s famous trademark and deprives the Complainant from offering its products to prospective clients”); Philip Morris USA Inc. v. Pieropan, WIPO Case No. D2011-1735 (“finding that the Trademark [MARLBORO®] is a well-known trademark worldwide as held by many other panels”); Philip Morris USA Inc. v. Malton Int’l Ltd., WIPO Case No. D2009-1263 (noting the “worldwide renown” of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (recognizing the fame of the MARLBORO® Trademarks); Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245) (stating that PM USA had used the MARLBORO® Trademarks “in a continuous and uninterrupted manner since 1883 and with the modern history of the brand beginning in 1955, and has established considerable goodwill in its mark throughout United States and the world. Complainants’ trademark MARLBORO® has been determined as famous by previous WIPO administrative panels”).

All of the Disputed Domain Names consist of either the ALTRIA Mark or the MARLBORO Mark plus the descriptive word “ecigs” connected by a hyphen, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. Four of the Disputed Domain Names consist of the MARLBORO Mark plus the descriptive word “light” or “lights” and the descriptive word “ecigs” connected by a hyphen, and then followed by gTLD “.com”. One of the Disputed Domain Names includes the MARLBORO Mark followed by the word “redbox” and the word “ecigs” connected by a hyphen, and then followed by gTLD “.com”. The words “light”, “lights”, “ecigs” and “redbox” in the Disputed Domain Names are descriptive or generic and imply that the website to which the Disputed Domain Names resolve is related to light cigarettes, electronic cigarettes or the red packaging of the cigarettes. The addition of “light”, “lights”, “ecigs” and/or “redbox” does not remove the similarity but instead increases the risk of confusion for consumers, as they could believe that the website to which the Disputed Domain Names resolve is associated with, connected to and/or sponsored by the Complainants.

Indeed, it is well established that the addition of descriptive or generic words to a trademark in its entirety does nothing to change an otherwise identical or confusingly similar domain name. See Philip Morris USA Inc. v. Ciger, WIPO Case No. D2011-1675 (ordering transfer of domain name “marlboroblack.com”); Philip Morris USA Inc. v. Deep Nuke t/a Lagnit Bali, WIPO Case No. D2012-1037 (“Given the highly distinctive nature of the MARLBORO mark which is readily recognizable within the Domain Name (and very much its dominant element), the Panel is satisfied that the Domain Name <indonesiamarlborocigarettes.com> is confusingly similar to the Complainant’s trademark.”). See also Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (The panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity). This is especially true, as in the present case, when the descriptive or generic word is associated with the complainant and its goods or services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Further, although the Disputed Domain Names contain a hyphen before the word “ecigs”, this is irrelevant for purposes of the Policy because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In this case, the Complainants have made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainants’ prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainants, that the Respondent is now or was ever known by the Disputed Domain Names, or that the Respondent had any authority, license or permission to use the Complainant’s trademarks. Nor was the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. The Respondent has been using the Disputed Domain Names for commercial gain.

The websites to which the Disputed Domain Names resolve is a parking page that contains sponsored links to a variety of third party sites that promote various services or products.¹ The Respondent likely collects referral fees for these links on the pay-per-click websites. Prior UDRP decisions have made it clear that such use, in circumstances such as the present, does not constitute a legitimate use of a domain name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.

Although there is nothing per se illegitimate in using a domain parking service, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments LTD / Mr. Cartwright, WIPO Case No. D2007-0267.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that, by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product on respondent’s website or location.

Policy, paragraph 4(b).

This Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ ALTRIA and MARLBORO Marks. The Respondent’s action of registering the Disputed Domain Names and using them to direct Internet traffic to its website evidences a clear intent to disrupt the Complainants’ business, deceive customers and trade off the Complainants’ goodwill by creating an unauthorized association between the Respondent and the Complainants. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.

Second, the website to which the Disputed Domain Names currently resolve contain hyperlinks that are pay-per-click sponsored ads that promote, among other things, various products and services. As such, the Respondent is not only trading on consumer interest in the Complainants in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but the Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practice constitutes bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).

Finally, the Respondent knew or should have known of the Complainants’ rights in its trademarks when registering the Disputed Domain Names. The Complainants’ ALTRIA and MARLBORO Marks are extremely famous and widely used and have been in use by the Complainants for many decades. Thus, it strains credulity to believe that the Respondent had not known of the Complainants or its trademarks when registering the Disputed Domain Names or creating the websites to which the Disputed Domain Names resolve. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). But even if the Respondent did not know of the Complainants’ trademarks when registering the Disputed Domain Names, which is highly unlikely, the Complainant is deemed to have had constructive knowledge of the ALTRIA and MARLBORO Marks. This conduct is indicative of bad faith. See Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

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 Names <altria-ecigs.com>, <marlboro-light-ecigs.com>, <marlborolight-ecigs.com>, <marlboro-lights-ecigs.com>, <marlborolights-ecigs.com>, and <marlbororedbox-ecigs.com> be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: March 18, 2014

¹ It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed pages. Many of these services will then provide the domain name registrant with part of that “click through” revenue.