The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Nikonov Anthon, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2019. On May 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 June 3, 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 June 3, 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 June 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 27, 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. 4. Factual Background
The Complainant is part of a group of companies affiliated with one of the world’s leading international tobacco manufacturers, Philip Morris International Inc. It offers “Reduced Risk Products” such as IQOS which is a precisely controlled heating device into which specially designed tobacco products under the brand names “Heets” or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol.
The Complainant owns inter alia the following trademark registrations:
- the international registration for the IQOS mark, No. 1218246, registered on July 10, 2014, for products and services in classes 9, 11, and 34;
- the international registration for the IQOS mark, No. 1338099, registered on November 22, 2016, for products and services in class 35.
The Respondent registered the disputed domain name on April 24, 2019.
The disputed domain name resolves to an online store allegedly offering the Complainant’s IQOS products, as well as competing third party products of other commercial origin. The website is provided in Ukrainian. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the IQOS mark. According to the Complainant, the disputed domain name contains the IQOS in its entirety and on its face, the disputed domain name immediately communicates a connection to the Complainant that does not exist. The Complainant further asserts that an addition of a generic term “company” does not render the disputed domain name dissimilar to the Complainant’s mark.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name and the Complainant has neither authorized the Respondent to register the disputed domain name nor to sell its IQOS products. The Complainant also claims that the Respondent does not use in connection with bona fide offering of goods or services as the website under the disputed domain name offers not only alleged IQOS products, but also competing tobacco products and/or accessories of other commercial origin.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent appears to have knowledge about the Complainant’s mark as it started offering the Complainant’s IQOS products immediately after registering the disputed domain name. In the Complainant’s opinion, this proves that the disputed domain name was intentionally registered to unfairly benefit from the goodwill of the Complainant’s mark. Moreover, the Complainant contends that the Respondent’s website gives the highly misleading and false impression of being owned, sponsored, and/or endorsed by the Complainant as it uses the IQOS mark and official images of IQOS products. Finally, it is pointed out by the Complainant that the Respondent is using a privacy protection service to hide its true identity, which may in itself constitute a factor indicating bad faith. B. Respondent
The Respondent did not 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 the term “company” after a hyphen. Such a term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark (see Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost,WIPO Case No. D2016-1923).
The Top Level Domain Name “.com” should not be taken into consideration while assessing the similarity between the disputed domain name and the Complainant’s mark.
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 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) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Complainant did not authorize the Respondent to register the disputed domain name; (c) 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. In particular, use of a domain name that includes a registered mark, for the purpose of creating a website offering unauthorized products, as well as competing goods, and displaying this registered mark cannot be qualified as a bona fide offering of goods or services (see Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Tony Mak,WIPO Case No. D2018-0602).
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, not only does the Complainant’s mark predate the registration of the disputed domain name, but also the Complainant enjoys considerable renown as a manufacturer of tobacco products. In the light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.
Secondly, the Respondent has also used the disputed domain name in bad faith, which is evidenced by the screenshots of the Respondent’s website that offers IQOS products as well as competing goods. Previous UDRP panels have held that use of a trademark-related domain name to advertise or offer unauthorized, and/or competing products constitutes bad faith under UDRP 4(b)(iv) (See Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate,WIPO Case No. D2017-2450; Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407). Additionally, the website gives the false impression of being associated or endorsed by the Complainant. Moreover, the fact that Respondent is using a privacy protection service to hide its true identity is an additional factor indicating bad faith (see WIPO Overview 3.0, section 3.6 and the cases referenced therein). 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 10, 2019
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