The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Baryshev Ruslan, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Hosting Ukraine LLC (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 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 July 25, 2019. On July 24, 2019, the Center sent an email regarding the Language of Proceedings to the Parties. Both Parties replied on the same day.
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, in both English and Russian, and the proceedings commenced on August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. An informal email communication from the Respondent was received by the Center on July 24, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on August 28, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 4, 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 tobacco company, which is a part of the group of companies affiliated with Philip Morris International Inc., an international tobacco company (jointly referred to as “PMI”). The Complainant is the owner of the IQOS trademarks worldwide, such as:
- Russian Federation trademark IQOS, registration number 556749 registered on November 9, 2015;
- Russian Federation Registration IQOS (word) No. 686934 registered on December 10, 2018; and
- International Registration IQOS (word) No. 1218246 registered on July 10, 2014 designating Ukraine, among other countries.
The Respondent registered the Domain Name on May 20, 2019. The Respondent had used the Domain Name to direct to a website offering repair services to Complainant’s IQOS products. Currently, the Domain Name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a company, which is part of the PMI. The Complainant states that PMI is the leading international tobacco company, with products sold in approximately 180 countries.
The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s IQOS trademark. The Complainant claims that the Domain Name incorporates the Complainant’s trademark in its entirety. The Complainant states that addition of the non-distinctive and descriptive word “remont” (which translates from Russian as “repairs”) to the Complainant’s trademark is insufficient to avoid a finding of confusing similarity. The Complainant contends that the applicable generic Top Level Domain (“gTLD”) in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because of the following reasons: 1) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark; 2) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because (i) the Respondent is neither an authorized distributor, reseller nor a repair services operator of the IQOS System; and (ii) the website provided under the Domain Name does not meet the requirements for a bona fide offering of goods or services because (a) the Domain Name in itself suggests at least an affiliation with the Complainant and its IQOS trademark; (b) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the top of the website where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider; and (iii) the disclaimer offered at the bottom of the website is not sufficiently prominent.
The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent knew of the Complainant’s trademark at the time of the Domain Name registration. The Complainant contends that the Respondent chose the Domain Name intending to invoke a misleading association with the Complainant. The Complainant claims that the Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its 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 or its services. The Complainant submits that the Respondent’s use of a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, in an informal email communication with the Center, the Respondent stated that the website associated with the Domain Name no longer worked. 6. Discussion and Findings 6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar in this case confirmed that the language of the registration agreement for the Domain Name is Russian, therefore the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English. The Complainant contends that the following factors support its request: 1) the Respondent’s ability to understand and use English, and 2) time and costs for translating the Complaint from English to Russian.
The Respondent has indicated in Russian that the website was no longer active. However, he did not object for proceeding to be conducted in English. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include … (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, … (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint...”.1
The Panel finds that under the circumstances of this case English is an appropriate language of this proceeding. Specifically, the Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name comprised of the Complainant’s IQOS trademark, which have no meaning in Russian. Second, the Respondent selected the Domain Name with Latin, rather than Cyrillic, characters. Third, the Respondent’s website contains a number of words/phrases in English.
In addition, the Respondent had ample opportunity to object to the Complainant’s request for English to be the language of this administrative proceeding, but failed to do it. The Center notified the Parties in both Russian and English of the potential language issue, providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.
Therefore, to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving the present dispute, the Panel will conduct this administrative proceeding in English. 6.2. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The evidence of file shows that the Complainant owns several trademark registrations for the IQOS mark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The Domain Name consists of the words “remont”, which is transliteration of the Russian word “ремонт” in Latin characters, a hyphen, the Complainant’s IQOS trademark and the gTLD “.com”. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”2 Because the IQOS trademark is recognizable within the Domain Name, neither the addition of the descriptive term “remont”, which means “repair” in Russian, nor the addition of hyphen would prevent a finding of confusing similarity under the first element. 3 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”4
Thus, the Domain Name is identical or confusingly similar to the Complainant’s IQOS trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent5 .
The Complainant alleges that it has not licensed or permitted the Respondent to use the Complainant’s IQOS trademark in domain names, or for any other purpose. Therefore, the Respondent is using the Complainant’s trademark without an authorization. While some previous UDRP panels have recognized that service providers using domain names containing complainant’s trademark to undertake repairs related to complainant’s goods may be making a bona fide offering of services and thus have a legitimate interest in such domain names in some situations6 . In this case, the Respondent’s use of the Domain Name does not satisfy requirements of such bone fide offering of goods and services.
Outlined in the Oki Data Test7 , the following cumulative requirements must be satisfied for respondent to make a bona fide offering of goods and services:
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”8
Here, the Respondent used the Domain Name to direct to a website in the Russian language offering post-guarantee repair for the Complainant’s IQOS products, as well as replacement parts of such products. The website at the Domain Name featured the Complainant’s registered IQOS trademark alone and as a part of the purported name of the Respondent’s business “Master IQOS”.
The Respondent’s website contained a disclaimer stating: ““Mаster IQOS” не является представителем или официальным сервисом компании Philip Morris и осуществляет только постгарантийный ремонт”, which means “Master IQOS is not a representative or an official service of the Philip Morris company and provides only post-guarantee repair”. This disclaimer was displayed in a very small font and was placed at the bottom of the webpage. The disclaimer was neither sufficiently prominent to be effective, nor was it clear enough to communicate who is the owner of the IQOS mark. See, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island,WIPO Case No. D2004-0711 (“Turning to the disclaimer, the Panel finds that Respondent’s disclaimer is not sufficient to form an effective defense. The disclaimer is to be found towards the bottom of the home page, itself, but nevertheless, the disclaimer is still below the place where a customer would click to order Respondent’s products and is not perceptible immediately by the public. Said disclaimer is not effective”). Therefore, the disclaimer contained in the Respondent’s website did not satisfy the Oki Data Test and the Respondent did not make bona fide offering of goods or services.
The evidence on file also shows that the Respondent has not been commonly known by the Domain Name.
Further, the Respondent’s deactivation of its website in response to a communication from the Center about the Complaint and language of the proceeding, supports finding that it lacks any rights or legitimate interest in the Domain Name.
Finally, the Respondent’s current non-use, or passive holding, of the Domain Name is further evidence that it does not have any rights or legitimate interests in the Domain Name. (See, e.g., BMW v. Weiss,WIPO Case No. D2017-2145) (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”)
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Respondent’s registration and use of the Domain Name constitute bad faith under paragraph 4(b)(iv) of the Policy, because the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s IQOS mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name, the Respondent’s website. The Domain Name used to resolve to a website providing repair services and replacement parts for the IQOS products. The goods and services were offered for a payment. The provision of such services shows an intentional attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s IQOS trademark, and by confusing Internet users as to the source, sponsorship or affiliation or endorsement of the website by the Complainant. Moreover, the Respondent’s use of the ineffective disclaimer constitutes an admission of by the Respondent that the users may be confused.9
The Respondent’s current non-use or passive holding of the Domain Name constitutes further evidence of the Respondent’s bad faith.10 The Respondent’s registration of the Domain Name incorporating the Complainant’s well-known trademark and its prior bad-faith use of the Domain Name make any good faith use of the Domain Name implausible.
The Complainant satisfied third element of the UDRP. 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.
Olga Zalomiy
Sole Panelist
Date: September 17, 2019
1 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
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