The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP), United States of America (“United States”) / Sergej Berezin, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 6, 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 9, 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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.
The Center appointed Jabur Wilson Pinheiro as the sole panelist in this matter on July 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. 4. Factual Background
The Complainant is part of the Philip Morris International Inc. group (hereinafter referred to as PMI), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world.
One of its products is the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS and HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities 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:
- Russian Federation registration No. 556749 for the word mark IQOS, registered on November 9, 2015 in classes 09, 11, and 34;
- International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014 in classes 9, 11 and 34;
- International registration No. 1338099 for the word and device mark IQOS, registered on November 22, 2016 in class 35; and
- International registration No. 1328679 for the word and device mark HEETS, registered on July 20, 2016, in classes 9, 11 and 34.
The disputed domain name was registered on May 4, 2019 and resolved to an online shop, written in Russian and indicating prices in the Ukrainian hryvnia currency displaying the Complainant’s IQOS and HEETS products. Currently no active webpage resolves from the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims to have, in the course of transforming its business from combustible cigarettes to reduced risk products that present or are likely to present less risk of harm to smokers, developed the IQOS system, first launched in Nagoya, Japan in 2014.
Asserting to have invested USD 6 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, currently having 7.3 million relevant consumers.
According to the Complainant, the disputed domain name was registered through a privacy registration service provider, so as to conceal the identity of the real owner and operator of the disputed domain name. After the unveiling of the details and confirmation to the Center the Complainant asserted that the Respondent is not known or in any way related to any company belonging to PMI and is not authorized to use the IQOS trademarks.
Also according to the Complainant, the use of the disputed domain name in connection with an online shop allegedly offering the Complainant’s products, in Russian and indicating all prices in Ukrainian hryvnia currency, clearly characterizes an attempt to pass off as an official online of the Complainant’s products in the Russian Federation and/or Ukraine. Furthermore, the unauthorized reproduction of the Complainant’s official product images and marketing materials, not indicating not to be affiliated to the Complainant, creates a false impression to Internet users that the Respondent is connected with or one of the Complainant’s official distributors.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
i. 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;
ii. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing 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;
iii. the Respondent is not an authorized reseller of the Complainant’s IQOS system;
iv. the criteria for a bona fide offering of goods and services as established in Oki Data Americas, Inc. v. ASD, WIPO Case No. D2001-0903 are not met;
v. 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;
vi. the website that resolved to the disputed domain name presented the Complainant’s IQOS logo and other of its trademark protected logos in a prominent manner and the product images used on such website are the Complainant’s official product images which were used by the Respondent without authorization; and
vii. the website to which the disputed domain name resolved included no information regarding the identity of the provider of the website which further served to perpetuate the false impression of a commercial relationship between the disputed domain name and the Complainant.
As to the registration and use of the disputed domain name the Complainant states that:
i. the Respondent knew of the Complainant’s trademark when registering the disputed domain name:
ii. 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;
iii. the purpose of the Respondent’s 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;
iv. by reproducing the Complainant’s registered trademark in the disputed domain name and in 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; being this suggestion also supported by the Respondent’s use of the Complainant’s official product images; and
v. the choice to retain a privacy protection service so as to hide its true identity is a further indicative of bad faith as recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights over the IQOS trademark.
The disputed domain name incorporates the Complainant’s trademark with the addition of the term “label” does not prevent the disputed domain name from being confusingly similar with the IQOS trademark. See WIPO Overview 3.0, section 1.8.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is 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 trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and is neither an authorized reseller of the Complainant’s IQOS system nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS trademark.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop offering the Complainant’s products, reproducing the Complainant’s IQOS and HEET logos in a prominent manner, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, clearly suggest at least an affiliation with the Complainant which in fact does not exist. In addition to that the absence of a disclaimer on the website disclosing the lack of a relationship between the parties cannot be considered a bona fide use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the IQOS trademark, as well as the online shop that was available at the webpage relating to the disputed domain name, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, which created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement thereof. The fact that the disputed domain name currently does not resolve to an active website, does not change the Panel’s findings.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: July 25, 2019
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