The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Pavelas Laptevas of Moscow, Russian Federation / Whois Agent, Whois Privacy Protection Service, Inc., United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2017, 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 June 6, 2017 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 amendment to the Complaint on June 7, 2017.
The Center verified that the Complaint together with the amendment to the 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 June 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2017. Apart from two informal emails received from the Respondent, no formal Response was filed with the Center.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 3, 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.
In the email communication of June 30, 2017, the Respondent requested the Panel to provide him with Russian translation of the case related documentation. On June 4, 2017, the Panel acknowledged the receipt of the Respondent’s request and stated that the Registration Agreement in the case at hand was made in English, thus, pursuant to Paragraph 11(a) of the Rules, English shall be the language of the proceedings. The Panel explained that it does not observe any special circumstances which would justify granting this request. In the email communication of June 4, 2017, the Respondent reiterated its request. 4. Factual Background
The Complainant is a Swiss company established under the laws of Switzerland and a subsidiary of Philip Morris International, Inc. The Complainant’s group is a leading international tobacco company.
The Complainant developed and sold a smoke-free product called IQOS which is available in around 25 markets across the world. IQOS is a heating device into which a specially designed tobacco product under the brand names “HEETS” and “HeatSticks” is inserted and heated to generate a flavorful nicotine-containing vapor.
The Complainant owns i.a. the following trademark registrations:
- US trademark registration for the IQOS mark (word) No. 4763090, registered on June 30, 2015, in classes: 9, 11, 34;
- Russian trademark registration for the IQOS mark (word) No 556749, registered on November 9, 2015 in classes: 9, 11, 34;
- International trademark registration for the IQOS mark (word) No. 1218246, registered on July 10, 2014 in classes: 9, 11, 34 and designating Antigua and Barbuda, Bahrain, Bonaire, Saint Eustatius and Saba, Colombia, Curaçao, European Union, Georgia, Israel, India, Iceland, New Zealand, Sultanate of Oman, Philippines, Sint Maarten, Tunisia, Turkey, Albania, Armenia, Bosnia and Herzegovina, Belarus, Cuba, Algeria, Egypt, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Republic of Moldova, Montenegro, the former Yugoslav Republic of Macedonia, Mongolia, Serbia, Ukraine, Viet Nam.
The disputed domain name is linked to an alleged online shop offering the Complainant’s IQOS product.
The disputed domain name was created on April 28, 2017. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the IQOS mark. The Complainant emphasizes that the disputed domain name contains the IQOS mark in its entirety. According to the Complainant, the addition of the letter “RF” which refer to the Russian Federation is not sufficient in itself to avoid any risk of confusion.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name incorporating its IQOS trademark. Moreover, according to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. The Complainant contends that firstly, the Respondent is not an authorized reseller of the IQOS products and offers those products for sale without the required age verification process, and secondly, the website provided under the disputed domain name does not meet the requirements set-out by numerous UDRP panel decisions for a bona fide offering of goods. The Complainant emphasizes that the website that the disputed domain name resolves to suggests that there is a commercial relationship between it and the Complainant as it presents the Complainant’s mark and does not reveal the identity of the website provider.
Thirdly, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant asserts that the Respondent knew of the Complainant’s IQOS trademarks when registering the disputed domain name since it started offering the Complainant’s IQOS products for sale immediately after registering it. Furthermore, the Complainant argues that reproducing the Complainant’s mark in the disputed domain name and on the website is a clear evidence of bad faith use. According to the Complainant, the fact that the Respondent is using a privacy protection service to hide its true identity in itself may constitute a factor indicating bad faith. B. Respondent
Apart from the informal communications received from the Respondent discussed under section 3, the Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the IQOS mark in its entirety, with an addition of letters “rf”. In the Panel’s opinion, the letters “rf” may indeed refer to the Russian Federation as the geographical market of the website. In any case, they do not serve to distinguish the disputed domain name from the Complainant’s mark.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.com” may generally be disregarded as a gTLD being simply a necessary component of a domain name (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the IQOS mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name incorporating its IQOS trademark; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In particular, a use of a domain name, including a famous trademark, for the purpose of creating a website that mirrors this trademark and offers products sold under this trademark while not disclosing the relationship with the trademark owner cannot be qualified as a bona fide offering of goods or services (see, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the registration of a disputed domain name including a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (see Société pour I’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085). In the case at hand, it is reasonable to believe that the Respondent knew of the Complainant’s mark when registering the disputed domain name since it started offering the IQOS products for sale immediately after registering it. Using the privacy shield by the Respondent is a further evidence of the bad faith registration.
Secondly, the Respondent has also used the disputed domain name in bad faith. This is evidenced by the fact that the website that the disputed domain name resolves to offers goods produced by the Complainant, although it is not certain whether they are originals. Moreover, the screenshots of the website prove that the Respondent used the Complainant’s mark and did not inform the Internet users about his relationship, or lack thereof, with the Complainant. In the Panel’s opinion, the website under the disputed domain name strongly suggests that it is operated or supported by the Complainant itself. Therefore, Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is 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, be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: July 15, 2017
Full & Egal Universal Law Academy