WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altria Group, Inc. and Altria Group Distribution Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-1017

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, US / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <altriatheather.com> 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 April 27, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2020, 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 5, 2020.

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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2020.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on June 12, 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 Complainants are Altria Group, Inc. and Altria Group Distribution Company, both based in the United States. The first one is the mother company of the second one, and both hold trademark rights on which this Complaint is based. Both entities will be referred to as “the Complainant” in this decision.

The Complainant is a major player in the tobacco industry. It provides also numerous other services, including charities.

The Complainant holds several trademarks ALTRIA registered on the principal register of the United States Patent and Trademark Office (USPTO). These trademark rights include:

- ALTRIA no. 3,029,629 registered on December 13, 2005;

- ALTRIA and Design no. 3,073,900 registered on March 28, 2006;

- ALTRIA no. 4,815,825 registered on September 22, 2015;

- ALTRIA and Design no. 4,820,612 registered on September 29, 2015

The Complainant owns in particular the domain name <altria.com> registered in 2000 and <altriatheater.com> registered in 2002 which the Altria Theater uses as its primary website under the domain name <altriatheater.com>. This theater is located in Richmond (VA), where the Complainant has its principal place of business. The Complainant is a contributor and supporter of the Altria Theater, which was officially dubbed as such in February 2014 after Complainant contributed USD 10 million to the theater’s renovation works.

The disputed domain name is <altriatheather.com>. It was registered on February 7, 2020 under a privacy service. In the course of this proceeding, the identity of the Defendant was disclosed by the Registrar: Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

The disputed domain name redirects users to a website featuring pay-per-click (“PPC”) links to third-party websites. Some of these links relate to Broadway tickets, shows and theater.

The disputed domain name is for sale for the minimum amount of USD 899.

5. Parties’ Contentions

A. Complainant

The arguments of the Complainant on the three elements of the Policy can be summarized as follows:

First, the Complainant claims that there exists a confusing similarity between its trademarks ALTRIA and the disputed domain name. The word “altria” is wholly incorporated in the disputed domain name with the addition of the misspelt word “theather”. On that basis, the Complainant indicates that the disputed domain name is confusingly similar to his trademarks ALTRIA and ALTRIA and Design.

Second, the Complainant asserts that it has never authorized the Respondent to register and/or use any domain name incorporating any of the trademarks ALTRIA or ALTRIA and Design and that it has not granted any license, nor any authorization to the Respondent to use these trademarks. The Complainant claims that the use of a privacy service to register the disputed domain name and the redirection of Internet users from the disputed domain name to third-party websites, including some directly competing with the Complainant’s business does not amount to a bona fide offering of services. Moreover, the Complainant presumes that the Respondent receives PPC fees from these third party websites. The Complainant also claims that the disputed domain name is offered for sale for the minimum offer amount of USD 899, which is much more than what registration cost. Last, the Complainant points out that the disputed domain name was registered on February 7, 2020, around 20 years after the registration of its <altria.com> domain name and 18 years after the registration of the <altriatheater.com> domain name. According to the Complainant, these are all evidence of a lack of legitimate interest in the disputed domain name.

Third, on the issue of bad faith, the Complainant has developed several arguments. According to the Complainant, the Respondent was familiar with the Complainant’s brand and business as it chose a domain name that reproduces its trademark and associated it with a word linked to its activities. The almost identity between the disputed domain name and the Complainant’s domain name <altriatheater.com> strengthens the argument that the Respondent registered the disputed domain name to target the Complainant. The Complainant claims that this demonstrates “a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for the Respondent’s own pecuniary gain”. Moreover, the involvement of the Respondent in four prior UDRP disputes with the Complainant and over 200 prior UDRP cases, the intent to sell the disputed domain name for a much higher price than the out-of-pocket expenses and the registration under a privacy service all demonstrate bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.

The Complainant owns several trademark rights over the sign ALTRIA. These trademarks are fully reproduced in the disputed domain name <altriatheather.com>. The addition of the element “theather” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

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 disputed 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.

In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name, and the disputed domain name has not been used for any bona fide offering of goods or services. These allegations were not rebutted by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

To prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

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

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

Regarding, first, the registration of the disputed domain name in bad faith: the Respondent had specifically in mind the Complainant’s trademark ALTRIA when it registered the disputed domain name. It also had in mind that the Complainant’s trademark is associated to a theater located in Richmond (VA), and it therefore chose to register a domain name combining these elements, albeit with a misspelling. Such misspelling confirms yet again that the Respondent specifically targeted the Complainant, which operates an almost identical domain name <altriatheater.com>. Therefore, the Panel finds that the Respondent targeted the Complainant and its trademark ALTRIA to create a likelihood of confusion, when registering the disputed domain name.

Regarding, second, the use of the disputed domain in bad faith, the Panel notes the concordance here of a number of elements supporting a finding of bad faith, such as:

- the use of the disputed domain name to host a PPC webpage;

- the offering for sale of the disputed domain name which is clearly and necessarily linked to the Complainant for a cost which largely exceeds out-of-pocket expenses;

- the involvement of the Respondent in numerous prior UDRP proceedings, in which its bad faith was upheld on multiple occasions.

Finally and beyond these factual circumstances, the Panel does not conceive any possible use in good faith of the disputed domain name. Much to the contrary, the Respondent specifically targeted the Complainant’s business, by associating its trademark ALTRIA with the misspelt element “theather”, a word describing one of the Complainant’s activities / sponsorship.

Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.

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 <altriatheather.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: June 26, 2020