The Complainant is Philip Morris Products S.A., Switzerland, represented by P.M. Kisch Inc, South Africa.
The Respondent is Vlado Mecherka, Slovakia, self-represented. 2. The Domain Name and Registrar
The disputed domain name (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 June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 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 17, 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 19, 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 27, 2019.1 In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Center notified the commencement of the panel appointment process on July 22, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 24, 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 a company established under the laws of Switzerland and is a subsidiary of Philip Morris International, Inc., the international tobacco company with products sold in approximately180 countries.
The Complainant has developed a line of products called the IQOS System. IQOS 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. Today the IQOS System is available in 44 markets worldwide and has achieved considerable international success. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites and selected authorized distributors and retailers.
The Complainant owns a large portfolio of trademarks, including, but not limited to:
- IQOS (word mark), International Registration No. 1218246, registered on July 10, 2014 designating certain jurisdictions;
- IQOS (device mark), International Registration No. 1338099, registered on November 22, 2016 designating certain jurisdictions; and
- IQOS (device mark), International Registration No. 1329691, registered on August 10, 2016 designating certain jurisdictions.
The foregoing trademarks will hereinafter be referred to as the “IQOS Mark”.
The Disputed Domain Name was registered on May 30, 2019. The Disputed Domain Name resolves to “www.”, a website which is an online store displayed in Hungarian and allegedly offers for sale the Complainant’s IQOS System. The Respondent’s website prominently uses the Complainant’s registered IQOS logo at the top of the website, allegedly offers IQOS products for sale bearing the IQOS Mark, uses a number of the Complainant’s official product images, and includes a copyright notice at the bottom of the website.
The Respondent sent emails to the Complainant on June 18, 24 and 27, 2019, stating it would accept USD 2,000 to transfer the Disputed Domain Name to the Complainant. The Complainant refused the offer. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
Except for the emails mentioned in Sections 3 and 4 above, the Respondent made no formal reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i to iii)):
(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 respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the IQOS Mark.
It is uncontroverted that the Complainant has established rights in the IQOS Mark based on its use as well as its registered trademarks for the IQOS Mark worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the IQOS Mark.
The Disputed Domain Name consists of the IQOS Mark, connected by a hyphen to the descriptive word “aruhaz” in Hungarian, which translates to the word “store”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434.
Further, although the Disputed Domain Name contains a hyphen between the IQOS Mark and the word “aruhaz”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656(citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its IQOS Mark. The Respondent is not an authorized reseller, retailer or distributor of the IQOS System owned by the Complainant. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
In addition, the Panel notes the nature of the Disputed Domain Name which carries a risk of implied affiliation with the Complainant, see WIPO Overview 3.0, section 2.5.1.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and has used the Disputed Domain Name in bad faith to target the Complainant’s IQOS Mark and to drive Internet traffic seeking the Complainant’s products to the Respondent’s website for commercial gain. See paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in the Disputed Domain Name and on its website, it suggests that the Complainant is the source of the website, which it is not.
Third, the Respondent knew or should have known of the Complainant’s rights in its IQOS Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name more than four years after the Complainant first used and obtained its trademark registrations for the IQOS Mark. Immediately after registering the Disputed Domain Name, the Respondent directed it to a website in which the Complainant’s IQOS System was offered. As the term “iqos” is not commonly used to refer to tobacco products and is a unique identifier, it therefore strains credulity to believe that the Respondent had not known of the Complainant or its IQOS Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Finally, the Respondent’s offer to sell the Disputed Domain Name to the Complainant for an amount in excess of its out of pocket costs directly related to the Disputed Domain Name is further evidence of bad faith registration and use. See paragraph 4(b)(i) of the Policy.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by 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 Disputed Domain Name be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: August 1, 2019
1 The Respondent sent email communications on June 17 and 18, 2018, asking about the dispute and indicating that the Complainant can buy the Disputed Domain Name for USD 2,000. The Respondent sent an email to the Center on June 22, 2019 requesting the name and contact details of the Complainant. On June 24, 2019 and again on June 27, 2019, the Respondent sent emails to the Center, stating that it would accept USD 2,000 to transfer the Disputed Domain Name to the Complainant. The Center then notified the parties that they could suspend the proceedings to attempt to settle the case. The Complainant emailed the Center on June 25, 2019, stating that the Parties were unable to achieve a settlement, and requested the Center to continue the proceedings.
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