The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Name Redacted, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 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 December 19, 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 December 20, 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 January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on January 31, 2020. 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 and HEETS trademarks worldwide, such as: - International Registration No. 1218246 for IQOS issued on July 10, 2014 designating Ukraine, among other countries; - International Registration No. 1338099 for IQOS and device issued on November 22, 2016 designating Ukraine, among other countries; - International Registration No. 1326410 for HEETS issued on July 19, 2016 designating Ukraine, among other countries. The Respondent registered the Domain Name on November 27, 2019. The Respondent has used the Domain Name to direct to a website in Russian allegedly offering for sale Complainant’s IQOS and HEETS products as well as the Complainant competitors’ 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 “global” 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 or reseller of the IQOS system; (ii) the website provided under the Domain Name is selling competing tobacco products and/or accessories of other commercial origin; (iii) the website provided under the Domain Name does not meet requirements for bona fide offering of goods because, (a) the Respondent is not only offering the Complainant’s products, but also competing tobacco products and accessories; (b) the Domain Name in itself suggests at least an affiliation with the Complainant and its IQOS trademark because the Domain Name includes the Complainant’s IQOS trademark in its entirety together with the descriptive word “global”; (c) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the top left 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; (d) the Respondent’s website uses the Complainant’s official product images without authorization; (e) the Website includes no information regarding the identity of the provider of the website. 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 because the term “iqos” is unique to 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 by reproducing the Complainant’s trademark in the Domain Name and the title of the website associated with the Domain Name, and by using the Complainant’s images, the Respondent’s website suggests the affiliation between the Complainant and the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. 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 Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 Complainant’s IQOS trademark, the word “global” 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 2, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Because the IQOS trademark is recognizable within the Domain Name, the addition of the descriptive term “global” does not 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 out 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. The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name as a reseller or distributor. The Complainant contends that the Respondent is neither authorized distributor or reseller of the Complainant’s products. Previous UDRP panels have recognized that resellers or distributors using domain names containing complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a right or legitimate interest in such domain names in some situations 6. Outlined in the Oki Data case 7, the following cumulative requirements must be satisfied for the 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.” In this case, the Respondent’s use of the Domain Name does not satisfy requirements of such bone fide offering of goods and services. The Respondent used the Domain Name to direct to a website in the Russian language offering for sale the Complainant’s products, as well as competing tobacco products. The website at the Domain Name suggests affiliation between the Complainant and the Respondent because it displays the Complainant’s IQOS trademark, the Complainant’s photographs of its products and contains no information about the website owner. Moreover, the website at the Domain Name did not accurately and prominently disclose the registrant’s relationship with the Complainant. 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 during the proceeding supports finding that it lacks any rights or legitimate interests 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 has shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, paragraph 4(b)(iv). Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: …(ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name,…(vi) absence of any conceivable good faith use9 .” Given the worldwide reputation of the Complainant’s trademark and the fact that the Respondent used the Domain Name in connection with the website offering the Complainant’s IQOS products, it is likely that the Respondent was aware of the Complainant’s IQOS trademark at the time of the Domain Name registration and knew that its registration of the Domain Name would be identical or confusingly similar to the Complainant’s mark. The Domain Name used to resolve to the website offering for sale the Complainant’s IQOS products as well as the Complainant competitors’ products. The Respondent’s website that prominently displayed the Complainant’s IQOS trademark and the Complainant’s photographs of its products, contained no information about the website owner, which was identified only as “iqosglobal”. The Panel finds that the circumstances of this case support finding that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, the Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on Respondent’s website or location. The Respondent’s current non-use or passive holding of the Domain Name constitutes further evidence of the Respondent’s bad faith. Prior UDRP panels have found that non-use of a domain name would not prevent finding of bad faith in situations where no good faith use was plausible 10. Given the Respondent’s prior bad-faith use of the Domain Name and the nature of the Domain Name being confusingly similar to the Complainant’s trademark any good faith use of the Domain Name is implausible. The Complainant satisfied the 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 Olga Zalomiy 1 Based on the case file, it appears that the Respondent is not the true holder and registrant of the disputed domain name. In light of a potential risk of identity theft, the Panel, therefore, has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the Decision in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. 2 Section 1.7, WIPO Overview 3.0. 3 Section 1.8, WIPO Overview 3.0. 4 Section 1.11.1, WIPO Overview 3.0. 5 Section 2.1, WIPO Overview 3.0. 6 Section 2.8.1, WIPO Overview 3.0. 7 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. 8 Id. 9 Section 3.1.4, WIPO Overview 3.0. 10 Section 3.3, WIPO Overview 3.0.
Sole Panelist
Date: February 10, 2020
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