WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altria Group, Inc., Altria Group Distribution Company v. Zhang Xiao
Case No. D2017-1157
1. The Parties
The Complainants are Altria Group, Inc. and Altria Group Distribution Company of Richmond, Virginia, United States of America (the “Complainant”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Zhang Xiao of Chengdu, Sichuan, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <altria.sale> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2017, 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 June 15, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and provided an amended Complaint on the same day. The Respondent requested that Chinese be the language of the proceeding by three emails on June 16, 2017.
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 Chinese of the Complaint, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. On June 21, 2017 and June 22, 2017, the Respondent submitted two emails requesting a Model Response in Chinese. On June 30, 2017 and July 4, 2017, a third party submitted two emails to the Center, indicating that it is not related to the Respondent and requested not to be copied in further email communications. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties of the commencement of panel appointment process on July 12, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on July 18, 2017. 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 owns the ALTRIA trademark and uses this in commerce as the owner of tobacco product operating companies (including MARLBORO and BLACK & MILD). 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 Altria Group 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
The Respondent registered the disputed domain name <altria.sale> on May 13, 2017. The disputed domain name is used by the Respondent to redirect Internet users to a different website each time they attempt to visit the disputed domain name. It redirects users to sites such as a pay-per-click website and a site which attempts to download an Adobe update automatically. These websites are all in English.
The Respondent has listed the disputed domain name for sale at a price of USD 1,999.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <altria.sale> is identical or confusingly similar to the Complainant’s registered ALTRIA trademark as it incorporates this trademark in its entirety. This is likely to cause confusion as to a relationship with the Complainant.
No Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the disputed domain name and has no affiliation with the Complainant in any way. The Complainant also contends that the Respondent has made no bona fide offering of goods or services on the disputed domain name and thus shows no rights or legitimate interest in the disputed domain name.
Registered and being used in bad faith
The Complainant alleges that there is no doubt that the Respondent, before the registration of the disputed domain name, was aware of the ALTRIA trademark and deliberately registered the disputed domain name to create confusion with the Complainant and its trademarks. This shows it was registered in bad faith. The Complainant submits the Respondent used its trademarks to attract Internet users to its site for commercial gain. Furthermore, the Complainant alleges that the disputed domain name is being offered for sale at a price exceeding the out of pocket expenses of the Respondent, thus providing evidence of use in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. However, the Panel notes that the Respondent requested Chinese be the language of the proceeding, and a Model Response in Chinese.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be in English on the grounds that the website found at the disputed domain name is in English, and that ALTRIA has no specific meaning in Chinese. The Complainant also submitted that the Respondent has been a named party in prior UDRP cases conducted in English. The Complainant also stated that the Complainant is unfamiliar with the Chinese language, and that translation would delay the proceeding and place the Complainant at a disadvantage.
The Respondent responded to the language of the proceeding request stating that it chose Chinese as the language of the proceeding and requesting a Model Response in Chinese. This was provided.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent has requested the proceeding in Chinese because the Respondent stated that the disputed domain name was registered in China, whose official language is Chinese and the Respondent has been using the disputed domain name in China. But the Respondent did not file a formal Response in Chinese. As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark ALTRIA and the generic Top-Level Domain (“gTLD”) “.sale”. Other than the gTLD it is identical to the Complainant’s registered trademark. The addition of the gTLD “.sale” does not stop the disputed domain name being identical to the Complainant’s trademark.
The Panel notes that the Complainant does not rely on any registered trademarks for ALTRIA in China where the Respondent is located. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered, and is being used in bad faith.
As discussed under Section 4 above, the disputed domain name is used to redirect Internet users to a different website each time they attempt to visit the disputed domain name (pay-per-click website for example).
It is highly likely that the Respondent knew of the Complainant prior to its registration of the disputed domain name. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Furthermore, the fact that the Respondent is offering to sell the disputed domain name constitutes bad faith under paragraph 4(b)(i) of the Policy.
The third part of paragraph 4(a) of the policy is therefore satisfied.
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 <altria.sale> be transferred to the Complainant.
Date: July 31, 2017