WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altria Group, Inc. / Altria Group Distribution Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-1127
1. The Parties
The Complainant is Altria Group, Inc., United States of America / Altria Group Distribution Company, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <altriarewards.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2019. On May 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 23, 2019.
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 of the Complaint, and the proceedings commenced on May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 17, 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.
4. Factual Background
The following facts are undisputed.
The Complainant is the parent company of four tobacco operating companies, including Philip Morris USA Inc., the manufacturer of cigarettes under the MARLBORO trademark.
The Complainant also uses the ALTRIA trademark in offering charitable services such as providing scholarships and financial services. The Complainant owns the domain name <altria.com> and operates a website at “www.altria.com” that provides information about the Complainant and its operating companies.
The Complainant is the registered owner of the following trademarks on the principal register of the United States Patent and Trademark Office including:
December 13, 2005
ALTRIA & Design
March 28, 2006
September 22, 2015
ALTRIA & Design
September 29, 2015
These trademarks will also be referred to as the “Trademark”.
The Domain Name was registered on August 13, 2018 and redirects to third party websites.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
In creating the Domain Name, the Respondent has added the generic, descriptive term “rewards” to the Trademark, thereby making the Domain Name confusingly similar to the Trademark. The fact that such term is closely linked and associated with the Complainant’s brand and the Trademark only serves to underscore and increase the confusing similarity between the Domain Name and the Trademark. The Complainant refers to the existence of the MARLBORO Rewards program.
The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Furthermore, the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Trademark. Furthermore, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which past panels have also found to equate to a lack of legitimate interest.
The Domain Name occasionally redirects to third party websites that promote online gambling activities, online travel and accommodation search portal or a fictitious HBO page promoting the recent trend of Game of Thrones. In other occasions, the Domain Name redirects to a website which requires users to complete a survey to receive a FREE Samsung Galaxy S10+…” In creating the impression that the Respondent’s website is one that is authorized and administered by the Complainant, the Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information, according to their locations, by completing a survey with Singtel, a telecommunications company in Singapore. Thus, the website at which the Domain Name resolves seeks to take advantage of the fame of the Complainant’s trademarks and the trust and goodwill that the Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to the Respondent’s website for personal gain, and at worst, ‘phish’ personal information from the Complainant’s customers (in the event that the Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). This use of the Domain Name, presumably for commercial gain, and with devious, nefarious motives, clearly fails to constitute a bona fide offering of goods or services.
There will also be instances where the Domain Name redirects to a pay-per-click site. The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the website at which the Domain Name resolves features multiple third-party links for reward cards that implied the Complainant’s reward program in the United States. Presumably, The Respondent receives pay-per-click fees from the linked websites that are listed at the Domain Name’s website.
The Domain Name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests. Past Panels have consistently upheld this view.
At the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Domain Name, the Complainant has marketed and sold goods using the ALTRIA Trademark since 2003.
It is clear that the Respondent selected the Domain Name to intentionally confuse unsuspecting Internet users into visiting its website. As such, it must be held that the Respondent has intentionally misappropriated the Complainant’s Trademark as a way of redirecting Internet users searching for the Complainant to the Domain Name’s website. The Domain Name promotes third-party websites that promote online gambling activities online travel and accommodation search portal or a fictitious HBO page promoting the recent trend of Game of Thrones that are all unrelated to the Complainant and its services. This sort of tactic is labeled “bait-and-switch” for its propensity to confuse Internet users into believing that they are visiting a complainant’s site only to discover that the disputed domain is completely unconnected to that the complainant.
The Respondent has registered and used the Domain Name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. After first creating a strong likelihood of confusion by misappropriating the Complainant’s trademarks in the Domain Name, the Respondent has created the impression that the Respondent’s website is one that is authorized and administered by the Complainant, the Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by completing a survey to receive a FREE Samsung Galaxy S10+. The Respondent’s efforts to masquerade as the Complainant in an attempt to solicit sensitive, financial information from unsuspecting people certainly constitute fraud, which must be considered bad faith registration and use of the Domain Name.
The Respondent creates a likelihood of confusion with the Complainant and its Trademark by registering a domain name that clearly contains the Trademark and the generic term “rewards”, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website. By creating this likelihood of confusion between the Trademarks and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of Domain Name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple redirection of the Domain Name to various other random third parties websites, evidence of pay-per-click behavior to the Respondent’s website.
The Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus, the Domain Name must be considered as having been registered and used in bad faith, with no good faith use possible.
The Respondent has previously been involved in the various cases, which provides evidence of a pattern of cybersquatting in which the Respondent is engaged in:
- LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2019-0248;
- John Middleton Co. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2600;
- The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2348;
- Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1616.
In addition to the Domain Name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Domain Name.
The Respondent has also registered domain names that each infringe upon the Complainant’s other well-known trademarks BLACK & MILD and MARLBORO, which the Complainant won back through the UDRP process.
The Respondent is currently offering to sell the Domain Name, which constitutes bad faith, because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of his out-of-pocket expenses.
The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
The Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name reproduces the Trademark in its entirety, only adding the descriptive term “rewards” to the Trademark. That addition of the term “rewards” is insufficient to avoid any confusing similarity.
In addition, with regard to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and, Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is a necessary component of a domain name.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
Based on the record, there is no evidence of any of the circumstances set forth in paragraph 4(c) of the Policy, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file of any other rights or legitimate interests in the Domain Name. There is also no evidence that the Complainant ever permitted in any way the registration or use of the Trademark, or to apply for or use any domain name incorporating the Trademark. Furthermore, the use of the Domain Name for pay-per-click services cannot be considered a bona fide offering of goods or services. There is no evidence of any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. There is also no evidence of any legitimate noncommercial or fair use of the Domain Name. Moreover, based on the evidence presented and lacking any evidence to the contrary, the Panel finds it very likely that the Domain Name is also used for “phishing” personal information.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world. Based on the facts of the matter, several circumstances indicate that the intention behind the registration of the Domain Name was in fact to profit in some fashion from or otherwise exploit the Trademark.
Furthermore, in the Panel’s view there is no other plausible explanation as to why the Domain Name was registered, other than in awareness of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant and/or to use the Domain Name for phishing purposes.
Accordingly, the cumulative circumstances as outlined in the decision, including the fact that the Respondent has engaged in a pattern of domain name grabbing and the fact that the Domain Name is offered for sale in excess of the Respondent’s out-of-pocket expenses, are sufficient for the Panel to find bad faith registration and use.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <altriarewards.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: June 17, 2019