WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Altria Group, Inc. and Altria Group Distribution Company v. 杨智超 (Yang Zhi Chao)

Case No. D2020-3395

1. The Parties

The Complainant is 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 杨智超 (Yang Zhi Chao), China.

2. The Domain Name and Registrar

The disputed domain name <altriavoluntarybenfits.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2020, 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 December 15, 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 in English on December 15, 2020.

On December 15, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 15, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese, and the proceedings commenced on January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.

The Center appointed C. K. Kwong as the sole panelist in this matter on March 1, 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

Altria Group, Inc. (“Altria Group”) of the Complainant, is the parent company of four large tabacco operating companies, including (a) Philip Morris USA Inc., (b) U.S. Smokeless Tobacco Company LLC, (c) John Middleton Co., and (d) Nat Sherman.

Altria Group is the owner of numerous trademarks consisting of or comprising the term ALTRIA. These registrations include the following registrations:

a) China Registration No. 7037885 for the mark ALTRIA and device registered on July 28, 2010 in International Class 36;

b) China Registration No. 7037886 for the word mark ALTRIA registered on July 28, 2010 in International Class 36;

c) European Union Trade Mark Registration No. 007296411 for the mark ALTRIA and device registered on July 22, 2009 in International Classes 35, 36, 43 and 45;

d) European Union Trade Mark Registration No. 007296726 for the mark ALTRIA registered on March 22, 2010 in International Classes 35, 36, 43 and 45;

e) United States Registration No. 3029629 for the mark ALTRIA registered on December 13, 2005 claiming first use in commerce on January 27, 2003 in International Classes 35, 36 and 42; and

f) United States Registration No. 3073900 for the mark ALTRIA and device registered on March 28, 2006 claiming first use in commerce from January 27, 2003

Altria Group Distribution Company (“AGDC”) is a subsidiary of Altria Group.

Altria Group owns the <altria.com> domain name since March 15, 2000 and operates a website at “www.altria.com” that provides information about Altria Group and its operating companies.

Altria’s benefits vendor maintains the domain name <altriavoluntarybenefits.com> which resolves to the website for Altria employee benefits.

The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid ALTRIA mark occurred many years before the registration of the disputed domain name <altriavoluntarybenfits.com> on November 5, 2020.

Other than the particulars shown on the printout of the database search conducted by the Complainant in the WhoIs Database (Annex 2 of the amended Complaint) and screenshot of the website to which the disputed domain name resolves (Annex 3 of the amended Complaint), there is no other evidence in the case file concerning the background of the Respondent and its business. According to the evidence provided by the Complainant, the website at which the disputed domain name resolves features third party pay-per-click links for “Employee Benefits” and “Employee Payroll Service”, etc.

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions:

Altria Group offers a number of services under its ALTRIA trade name and trademark, including charitable services and providing information about underage tobacco prevention and tobacco issues.

With 8,300 employees, Altria Group has been named one of the top Workplaces in Richmond, United States.

The disputed domain name incorporates the ALTRIA mark in its entirety. Adding the descriptive term “voluntarybenfits” (a purposeful misspelling of “voluntary benefits”) to Complainant’s ALTRIA trademark, makes the disputed domain name confusingly similar to the Complainant’s trademark. The Complainant has not licensed, authorized, or permitted the Respondent to use the Complainant’s trademark.

The name of the Respondent is “杨智超 (Yang Zhi Chao)”, and does not resemble the disputed domain name in any manner. He is not commonly known by the disputed domain name.

The website to which the disputed domain name resolves features multiple third party links for “Employee Benefits” and “Employee Payroll Service” which may be mistaken for employee benefits related to Complainant.

The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services. The Respondent registered the disputed domain name on November 5, 2020 which is significantly after the (a) registration of the Complainant’s registration of the ALTRIA trademark in China and United States, (b) the Complainant’s first use of the ALTRIA trademark in commerce on January 27, 2003 and (c) the Complainant’s registration of its <altria.com> domain name on March 15, 2000.

Searches across a number of Internet search engines for “altria voluntary benfits” return multiple links referencing the Complainant and its business.

The disputed domain name captures the Complainant’s ALTRIA trademark in its entirety with the addition of the misspelled phrase “voluntary benfits” which is confusingly similar to the <altriavoluntarybenefits.com> domain name maintained by Altria’s benefits vendor. This demonstrates the knowledge of and familiarity with the Complainant’s brand and operations.

B. Respondent

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

6. Discussion and Findings

A. Notice of Proceedings

The contact particulars of the Respondent and the details of disputed domain name were fully set out in the publicly available WhoIs search results provided in Annex 2 to the amended Complaint. Such contact details also match those provided by the Registrar to the Center on December 15, 2020.

On January 7, 2021, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding and the Written Notice to the Respondent in accordance with the contact details above by email and courier.

The Panel finds that the Complainant and the Center have duly communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communication have been discharged and the Respondent is bound accordingly.

The Panel is satisfied that the failure of the Respondent to furnish a Response is not due to any omission or inadequate communication by the Center.

B. Language of Proceedings

Paragraph 11(a) of the Rules provides:

“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 language of the Registration Agreement for the disputed domain name is Chinese as confirmed by the Registrar.

In support of its request, the Complainant has inter alia argued that:

1. the Complainant is unable to communicate in Chinese;

2. translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

3. such delay poses continuing risks to the Complainant and unsuspecting employees who may inadvertently land on the website to which the disputed domain name resolves;

4. the disputed domain name is comprised of Latin Characters; and

5. the website found at the disputed domain name features English words.

In addition to the above, the Panel has also taken into consideration the fact that:

(a) the Respondent has not submitted any arguments/supporting materials to explain why the proceedings should not be conducted in English;

(b) the contents of the website to which the disputed domain name resolved (as shown in Annex 4 of the amended Complaint) was in English; and

(c) The skillful combination of the Complainant’s English word mark ALTRIA with the English words “voluntary benefits” (misspelt as “benfits”) which are the two English words in the domain name of <altriavoluntarybenefits.com> maintained by the Complainant’s benefits vendor.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006‑0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006‑0432).

Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

C. The Three Elements

The said three elements are considered below.

In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he 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”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(f) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002‑1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003‑0465.

1. Identical or Confusingly Similar

On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in its trademark which essentially consists of the term ALTRIA by reason of its various trademark registrations as recited in Section 4 above.

Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ALTRIA. The addition of the dictionary English words “voluntary benefits”, misspelt as “benfits”, as suffix is not sufficient to distinguish the disputed domain name from the Complainant’s said ALTRIA Mark. It is also a well-established practice to disregard the generic Top-Level Domain (“gTLD”), like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008‑0416.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.

2. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455. Once such prima facie case is made, the burden of production will shift to the Respondent to rebut that it does not have any rights or legitimate interests in the disputed domain name.

In the present case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in this disputed domain name. Further, the Panel notes that the name of the Respondent does not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as “altriavoluntarybenfits”. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.

There is no explanation on the record as to why it was necessary for the Respondent to adopt the term “altriavoluntarybenfits” in the disputed domain name. The Respondent has not responded to the Complainant’s contentions or otherwise rebutted the Complainant’s prima facie case.

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy is established.

3. Registered and Used in Bad Faith

The printout of the website to which the disputed domain name resolves as shown in Annex 3 of the amended Complaint shows references to products or services of the types which are similar to those of the Complainant’s benefits vendor, as shown in Annex 6 of the amended Complaint. In the absence of any evidence to the contrary, it appears that the Respondent was not using the disputed domain name for a purpose other than commercial gain. The Complainant has clearly stated that it has not authorized the Respondent to use the ALTRIA Mark or use it to register a domain name. It is the Complainant’s uncontradicted claim that references to products or services of the aforesaid types at the website to which the disputed domain name resolves would result in the public being misled into believing that such are associated or otherwise connected with the Complainant.

In the circumstances and given the Complainant’s uncontradicted claim of registration of its said ALTRIA Mark and apparent use of that mark for many years well before the registration of the disputed domain name on November 5, 2020, there is a strong case for the Respondent to come forward to defend itself. The Respondent has not come forward with any defence.

The disputed domain name resolves to a website offering pay‑per‑click links related to the Complainant and services offered to the Complainant’s employees.

By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name in the manner described aforesaid, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.

The Complainant’s ALTRIA mark is sufficiently known on the Internet and in China, where the Respondent is located. The Panel cannot conceive of any use the Respondent might make of the disputed domain name that would not be a bad faith use. The Panel is satisfied that the overall circumstances are sufficient to constitute bad faith registration and use, of the kind found by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely‑known trademark and being a typo of a domain name actively used by the Complainant, affirms a finding of bad faith in these circumstances.

The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) 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 disputed domain name <altriavoluntarybenfits.com> be transferred to the Complainant.

C. K. Kwong
Sole Panelist
Date: March 15, 2021