WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altria Group, Inc. and Altria Group Distribution Company v. Stephen Thorpe, vrtx agency

Case No. D2021-1116

1. The Parties

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

The Respondent is Stephen Thorpe, vrtx agency, United States.

2. The Domain Names and Registrar

The disputed domain names <altriacrypto.com>, <altriacryptocurrencies.com>, and <altriacryptocurrency.com> (the “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 April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on April 13, 2021.

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 April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 11, 2021. 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 Group”) is a business corporation organized under Virginia law and headquartered near Richmond, Virginia, United States. Its stock is listed on the New York Stock Exchange. The Complainant Altria Group is a leading producer of tobacco, cigarettes, e-cigarettes, and related products sold in the United States and worldwide. The Complainant Altria Group Distribution Company (“AGDC”) is a wholly owned subsidiary, also organized as a Virginia corporation, that distributes tobacco products and owns relevant trademarks licensed within the Altria Group. The Complainants operate a principal website at “www.altria.com” that provides information about Altria Group and its operating companies, among other things.

Previously known as Philip Morris Companies, Inc., the Complainant Altria Group was rebranded in 2003 and has used ALTRIA marks since then in connection with tobacco production, distribution, sales, and consumer engagement and related services, as well as charitable services such as providing scholarships, various financial services, and providing information about tobacco and underage tobacco prevention.

Relevant United States registered trademarks held by the Complainants include the following:

The Registrar reports that all three Domain Names were registered on the same day, December 14, 2020, by the Respondent Mr. Thorpe, showing the registrant’s organization as “vrtx agency” of Beverly Hills, California, United States and listing an email address with the domain name <vrtxagency.com>. The website associated with that domain name advertises the digital marketing business of VRTX Agency, LLC, a limited liability company registered in California since 2017, according to the online database operated by the California Secretary of State.

At the time of this Decision, the Domain Names all resolve to a “free parking” landing page hosted by the Registrar advertising the Registrar’s services. The Complaint attaches screenshots showing that in April 2021 the associated landing pages displayed pay-per-click (“PPC”) advertising links leading to unrelated third parties trading crypto currencies such as Bitcoin.

5. Parties’ Contentions

A. Complainants

The Complainants assert that the Domain Names are confusingly similar to their registered ALTRIA trademarks and that the Respondent has neither permission to use the mark nor evident rights or legitimate interests in the Domain Names.

The Complainants argue that “ALTRIA is so closely linked and associated with Complainant that Respondent’s use of this mark strongly implies bad faith,” as the Domain Names are “so obviously connected with such a well-known name and products,” their use suggests opportunistic bad faith (citing Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

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 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.

Under paragraph 15(a) of the Rules, “[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”.

6.1 Preliminary Matter: Multiple Complainants

The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives UDRP panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, UDRP panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

Both Complainants in this instance are part of the same corporate group, using ALTRIA marks to which the Domain Names are confusingly similar. The Panel finds efficiency, and no prejudice, in allowing the Complaint to proceed with both Complainants.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainants hold registered ALTRIA trademarks, so it is unnecessary to assess their claims to common law ALTRIA marks, which would require further evidentiary support. All three Domain Names incorporate the ALTRIA mark in its entirety, and the addition of dictionary terms does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element. WIPO Overview 3.0, section 1.11.2.

Accordingly, the Panel concludes that the Complainants have established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainants have demonstrated trademark rights, a lack of permission to incorporate the Complainants’ mark in the Domain Names, and the Respondent’s failure to use the Domain Names for relevant commercial or noncommercial purposes. “Altria” appears to be a coined term, and the Respondent has not come forward with any legitimate interests to justify using the Complainants’ trademark for PPC landing pages or landing pages advertising the Registrar’s services.

The Panel concludes that the Complainants prevail on the second element of the paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainants (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainants’ mark is not a dictionary word, and the record shows that it had been well established online and nationally over a period of at least 15 years by the time the Domain Names were registered. The Panel finds that the Respondent more likely than not was aware of the Complainants’ distinctive and well-established mark. Under the registration agreement, the Respondent remains responsible for the use of the Domain Names. Parking them for PPC and Registrar advertising that exploits that trademark of another reflects bad faith congruent with the example given in the Policy, paragraph 4(b)(iv). See WIPO Overview 3.0, section 3.5.

The Panel finds on this record that the Respondent registered and used the Domain Name in bad faith and concludes that the Complainants have established the third element of the paragraph 4(a) of the Policy.

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 Domain Names, <altriacrypto.com>, <altriacryptocurrencies.com>, and <altriacryptocurrency.com>, be transferred to the Complainants.

W. Scott Blackmer
Sole Panelist
Date: May 21, 2021