The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Artur Arakelyan of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day confirming that the Domain Name is registered with it by the Respondent, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the language of the registration agreement is English and contains a submission at the location of the Registrar's principal office, and that the Domain Name would remain locked during this proceeding. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name and indicated that the expiry date of the Domain Name was January 25, 2017.
The Center wrote back to the Registrar on March 16, 2017, asking it to confirm that the expiry date of the Domain Name is January 25, 2018. The Registrar replied confirming that this is the correct date of expiry.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2017.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 13, 2017. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complies with material formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a member of the Philip Morris International group of companies which makes and sells tobacco products. The Complainant's group has developed a heating device into which tobacco products are inserted and heated to generate a flavored nicotine-containing vapor. The Complainant's group is marketing this device under the mark IQOS in 20 cities around the world. The Complainant has registered IQOS as a word mark in the United States of America (registration No. 4763090) registered on June 30, 2015, Russian Federation (registration No. 556749) registered on November 9, 2015, the European Union (registration No. 1218246) registered on July 10, 2014 and a number of other countries around the world.
The Respondent is a private individual residing in Moscow who is not connected with the Complainant's group. The Domain Name was registered on January 25, 2017. The Domain Name locates a website that provides an online shop purporting to sell the Complainant's IQOS products. The website displays a picture of an official IQOS store of the Complainant's group. The Complainant does not know whether the Respondent is reselling genuine products supplied by the Complainant or not. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its IQOS mark. The Complainant points out that the addition of the generic word "shop" does not avoid confusing similarity with the mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to register a domain name incorporating it. The Complainant refers to the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, (the "Oki Data decision"), and argues that the Respondent's use of the Domain Name does not meet the conditions set out in it since the Respondent's website suggests a non-existent affiliation with the Complainant.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Respondent must have known of the Complainant's trademarks since the Respondent is purporting to sell the Complainant's products. The Complainant contends that the Respondent is intentionally attempting to attract visitors to his website through use of the Domain Name for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, in particular by suggesting that it is a website of the Complainant's group or of an affiliated dealer of the Complainant's group.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
As stated above, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the mark IQOS.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the word "shop" together with a hyphen and the generic top level domain suffix. Many Internet users would understand the Domain Name to refer to a website where the IQOS products of the Complainant's group can be purchased.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
Although the position is not clear, the Panel will assume in the Respondent's favor that he is actually reselling genuine IQOS products supplied by the Complainant's group.
As noted in section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), many Panels have followed the guidance in the Oki Data decision, as to the circumstances in which a business may be regarded as making a bona fide offering of goods or services, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP, when it uses a domain name corresponding to a supplier's mark to locate a website advertising the resale of that supplier's products.
According to that guidance, a business using such a domain name in this way may have a legitimate interest, provided that the following conditions are satisfied: that it is actually offering the products or services at issue; that the website at the domain name is used to promote only those trademarked products or services; that the website accurately and prominently discloses the true relationship between the registrant and trademark owner (the supplier); and that the registrant does not attempt to register all domain names that reflect the supplier's mark.
In this case, the Respondent's website located by the Domain Name does not accurately and prominently disclose the Respondent's true relationship with the Complainant. On the contrary, by displaying a photograph of an official store of the Complainant's group without any indication that it is not connected with or authorized by the Complainant's group, the Respondent's website misleadingly implies that it is an official website of or connected with the Complainant's group, whereas there is no such connection.
In these circumstances, the Respondent cannot be regarded as making a bona fide offering within the meaning of paragraph 4(c)(i) of the UDRP so as to give him a right or legitimate interest in the Domain Name.
Furthermore, it is evident that the Respondent is not commonly known by the Domain Name and that he is not making a legitimate noncommercial or fair use of the Domain Name.
In the circumstances there is no basis on which the Respondent could claim a right or legitimate interest in the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
As stated above, the Panel finds that the Respondent's website misleadingly implies that it is an official website of or connected with the Complainant's group, whereas there is no such connection. Furthermore, having regard to all the circumstances, the Panel considers that it was the Respondent's intention so to mislead customers.
Accordingly, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website.
Under paragraph 4(b)(iv) of the UDRP this constitutes evidence that the Domain Name was registered and is being used in bad faith. There is no material on the file displacing this presumption. In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
The Panel concludes that all three requirements of the UDRP are satisfied. The Domain Name should be transferred to the Complainant. 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 Name be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: April 27, 2017
Full & Egal Universal Law Academy