The Complainant is Philip Morris Products S.A. of Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Malta Online Business Co., Zsolt Gaal of Cheyenne, Wyoming, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2019, 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 May 1, 2019 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 on May 2, 2019.
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 May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any formal response. On May 9, 2019 the Respondent sent an informal email. Accordingly, the Center notified the Respondent’s about the commencement of panel appointment process on May 28, 2019.
The Center appointed Christian Schalk as the sole panelist in this matter on June 11, 2019. 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English. 4. Factual Background
The Complainant belongs to the group of companies affiliated to Philip Morris International Inc. (hereinafter referred to as PMI), an international tobacco company. PMI sells its tobacco products in around 180 countries of the world. One of the products, which PMI has developed is the so-called IQOS system. It consists of a precisely controlled heating device into which specially designed tobacco products are inserted and heated to generate flavorful nicotine-containing aerosol as well as an IQOS pocket charger specially designed the IQOS device. The IQOS system is marketed in key cities in around 44 markets across the world in exclusive IQOS stores and websites and selected authorized distributors and retailers.
The Complainant owns among others the following trademarks:
- International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014, covering among others the European Union, for a range of goods in Int. Classes 9, 11 and 34;
- International registration No. 1338099 for the word and device mark IQOS, registered o November 22, 2016, covering among others the European Union, for a various goods in Int. Class 35.
The Respondent registered the disputed domain name on June 10, 2018. According to the material brought before the Panel, the disputed domain name resolves to a website where the IQOS word and device mark is featured on the top of the website. Below, several devices of the IQOS system are shown in different colors in a prominent manner and each offered for sale. The language of the website is Hungarian. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its IQOS trademark registrations. The Complainant argues in this context that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP and cites in this context Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost,WIPO Case No. D2016-1923 and AB Electrolux v. ID Shield Service,WIPO Case No. D2015-2027, to support this argument. The Complainant adds further that any Internet user when visiting a website to which the disputed domain name resolves, will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states in this context that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark or a domain name which will be associated with this trademark. Furthermore, the Respondent is not an authorized reseller of the Complainant’s IQOS system. The Complainant believes also that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name but shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. The Complainant argues further that also the criteria for a bona fide offering of goods and services as established by the Panel in Oki Data Americas, Inc. v. ASD,WIPO Case No. D2001-0903 are not met. The disputed domain name and the content of the website to which it resolves suggest at least an affiliation with the Complainant which in fact does not exist. The disputed domain name reproduces the Complainant’s IQOS trademarks, the website presents the Complainant’s IQOS logo and other of its trademark protected logos in a prominent manner and the product images used on this websites are the Complainant’s official product images which are used by the Respondent without authorization. In addition, the website to which the disputed domain name resolves includes no information regarding the identity of the provider of the website which further serves to perpetuate the false impression of a commercial relationship between the website and the Complainant.
Furthermore, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant states in this context, that the Respondent knew of the Complainant’s IQOS trademark when it registered the disputed domain name. According to the Complainant, the term IQOS is not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without intention of invoking a misleading association with the Complainant.
The Complainant argues also that the purpose of the Respondent registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant explains in this context that by reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case and that this suggestion is supported also by the Respondent’s use of the Complainant’s official product images.
The Complainant also argues that the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute also a factor indicating bad faith and refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 3.6 and the cases referenced therein. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
However, in its reply to the Center’s notification of the Complaint of May 6, 2019 it wrote among others as follows:
“If you are complaining about the domain name , then we can give you an offer to buy it for $ 15.000”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the trademark IQOS. The disputed domain name is confusingly similar to the Complainant’s trademark rights in IQOS.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). The disputed domain name features the word Mark “IQOS” in its entirety.
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004‑0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002).
As set out in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “webshop” does not prevent a finding of confusing similarity with the Complainant’s trademark.
Furthermore, the gTLD “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark IQOS in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” is generally disregarded when determining if there is identity or confusing similarity.
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.
The Respondent has directed the disputed domain name to a website which features in a prominent manner branding elements of the Complainant’s website such as the Complainant’s IQOS trademarks and the Complainant’s logos as well as the Complainant’s official copyright protected product images.
Therefore, the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
Furthermore, searches for the term “iqos” in a search engine such as Google revealed on the first page only hits of either websites of the Complainant about its IQOS products or references to articles about them. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and that the term IQOS has been chosen by the Respondent in order to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non‑exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. The website to which the disputed domain name resolves features branding elements and images of the Complainant’s “” website. The Panel’s own searches in search engines such as Google or Bing showed the Complainant and its business in a prominent manner. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The use, to which the disputed domain name is put, namely to a website which pretends the offering for sale of products of the Complainant is calculated to attract Internet users to the Respondent’s website in the mistaken belief that they are visiting a site of or associated with the Complainant. This website features in a prominent manner the Complainant’s IQOS trademarks and the Complainant’s logos as well as the Complainant’s official copyright protected product images. It is difficult even for well-informed Internet users to recognize that the website to which the disputed domain name resolves is neither an authorized source for purchasing the Complainant products nor there is any kind of relation between this website and the Complainant.
Therefore, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Another indication for bad faith use of the disputed domain name is that the Respondent, in its reply to the Center’s notification of the Complaint, offered the transfer of the disputed domain name for a price of USD 15.000. This is clearly in excess of the Respondent’s cost related to the disputed domain name. Previous UDRP panels have held that an offer to sell for in excess of out-of-pocket cost supports a finding of had faith under paragraph 4(b)(i) of the Policy, as appears to be the case here (see Audi AG v. Claus Linder,WIPO Case No. D2016-1579).
Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. According to searches of the Panel, the street address is located in the city of Cheyenne in the state of Wyoming, USA. However, the country indicated in the Whois report is Malta. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay any proceeding against it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Christian Schalk
Sole Panelist
Date: June 26, 2019
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