The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Маханьков Михаил Владимирович / Makhankov Mikhail, 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 October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2020, 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 November 2, 2020, 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 November 5, 2020. The Complaint was submitted in English. The language of the Registration Agreement for the Domain Name is Russian. On November 2, 2020, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On November 5, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 Russian and in English, and the proceedings commenced on November 9, 2020. On November 9, 2020, the Respondent sent an email asking what the subject of the Complaint was and who filed the Complaint. On November 10, 2020, the Center responded to the Respondent in Russian that it was sending a notification of the Complaint Commencement of the administrative proceeding in Russian. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on December 9, 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 part of the group of companies affiliated with Philip Morris International Inc., an international tobacco company (“PMI”). The Complainant is the owner of the IQOS and HEETS trademarks worldwide, such as: - International Registration No. 1218246 for the IQOS mark, registered on July 10, 2014 designating Ukraine, among other countries; - International Registration No. 1338099 for the IQOS design mark, registered on November 22, 2016 designating Ukraine, among other countries; - International Registration No. 1328679 for the combined HEETS mark, registered on July 20, 2016 designating Ukraine, among other countries; - International Registration No. 1326410 for the HEETS mark, registered on July 19, 2016 designating Ukraine, among other countries. The Respondent registered the Domain Name on September 30, 2020. The Domain Name resolves to a website in the Russian language offering for sale in Ukraine purported IQOS systems, HEETS products and tobacco products of the Complainant’s competitors. The website connected to the Domain Name is using several of the Complainant’s official product images and the Complainant’s trademarks without the Complainant’s authorization. No information about the owner of the website is provided on the Respondent’s website. The website promotes a Telegram channel under the name “IQOS- shop”, which also uses the Complainant’s IQOS trademark without authorization. 5. Parties’ Contentions A. Complainant The Complainant asserts that it is a company, which is part of the PMI. The Complainant states that PMI is an international tobacco company, with products sold in approximately 180 countries. The Complainant alleges 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 IQOS trademark in its entirety. The Complainant contends that the descriptive word “shop”, is insufficient to avoid finding of confusing similarity. The Complainant states that the applicable generic Top-Level Domain (“gTLD”) in the Domain Name is viewed as a standard registration requirement, which is disregarded under the confusing similarity test. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because of the following reasons: 1) the Respondent is neither an authorized distributor or reseller of the IQOS system; 2) the Respondent’s website provided under the Domain Name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods because the Respondent’s website is selling competing tobacco products and/or accessories of other commercial origin; 3) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, because: (i) t (ii) the website provided under the Domain Name does not meet requirements for bona fide offering of goods, because: (a) the composition of the Domain Name suggests an affiliation with the Complainant and its IQOS mark; (b) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS mark, appearing within the website banner, which may confuse Internet users in believing that the website is affiliated with the Complainant; (c) the Respondent’s website uses the Complainant’s official product images without authorization; (d) the website provides no information regarding the identity of the provider of the website, which is only identified as “IQOS-shop”. The Complainant contends that the Respondent’s website promotes a Telegram channel under the name “IQOS-shop”, which also uses the Complainant’s trademark without authorization. The Complainant claims that because its IQOS System is primarily distributed through official/endorsed store, consumers will mistakenly believe that the website under the Domain Name is an official/endorsed distributor. 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 IQOS 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 imaginative and unique to the Complainant. The Complainant claims that the Respondent registered and is using 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. The Complainant argues that the Respondent’s use of a privacy protection service to hide its identity may constitute a factor indicating bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Finding 6. 1. Procedural Issue - Language of the Proceeding Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case. Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) the Respondent is capable of communicating in English, while the Complainant cannot communicate in Russian without incurring unnecessary expenses. The Complainant asserts that the Respondent understands English because the Domain Name is in Latin script and not in Cyrillic script and because the website under the Domain Name is directed to an English-speaking public; and (ii) the website under the Domain Name includes a number of English words or phrases, suggesting that the Respondent understands English; and the Complainant, which is a Swiss entity, is unable to communicate in Russian. 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, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds no evidence that the website is directed to English-speaking public because the website that is in Russian, offers for sale various tobacco products to residents of Ukraine. The Panel, however, finds that (i) the Respondent, who was duly notified of the language of the proceeding in both English and Russian, and invited it to comment on the Complainant’s request for English to be the language of the proceeding, did not oppose the Complainant’s request; (ii) the Complainant is not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to participate in the proceeding in the Russian language; (iii) the Respondent appears to understand English because the website connected to the Domain Name contains words and phrases in English and because the Respondent registered the Domain Name comprised of the Complainant’s IQOS trademark, which have no meaning in Russian, in combinations with the English word “shop” to create an impression of an official online store selling IQOS products. Thus, it will not be unfair to the Respondent to conduct this proceeding in English. For the reasons stated, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2 Substantive Issues 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; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Respondent has registered and is using the Domain Name 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 submitted evidence shows that the Complainant owns several trademark registrations for the IQOS trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”1 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2 Here, the Domain Name consists of the Complainant’s IQOS trademark, a hyphen, a descriptive term “shop” and the gTLD “.online”. Because the Complainant’s IQOS trademark is recognizable within the Domain Name, neither the inclusion of the hyphen, nor the addition of the descriptive term “shop” or the gTLD “.online” detracts from confusing similarity. Thus, the Domain Name is confusingly similar to the Complainant’s IQOS trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent3 . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s IQOS trademark in domain names, or for any other purpose. The Respondent has not been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Previous UDRP panels have recognized that resellers or distributors using domain names containing the 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. Outlined in the Oki Data case4 , 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.”5 The Panel finds the Respondent’s conduct inconsistent with bona fide offering of goods and service given that the Respondent is using the website to sell he Complainant’s IQOS systems and HEETS products along with goods of the Complainant’s competitors. Further, the website at the Domain Name suggested affiliation between the Complainant and the Respondent because it displays the Complainant’s photographs of its products and a tagline “IQOS-SHOP”. Further, the Respondent’s website displays photographs of the Respondent’s store located at a galleria mall. The photographs show large interior and exterior store signs “IQOS”, which creates the impression that the Respondent runs an official store selling the Complainant’s goods. For the reasons stated, the Panel finds that the Complainant has made out the prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.6 The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has 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 the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the 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”7 . The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and is using the Domain Name in bad faith. Given the reputation of the Complainant’s IQOS marks, the Respondent’s use of the Domain Name incorporating the Complainant’s trademark for a website that sells goods under the Complainant’s HEETS and IQOS trademarks, and the Respondent’s use of the Complainant’s mark in the large storefront sign, the Respondent could not plausibly assert that he did not register the Domain Name to trade on the goodwill of the Complainant’s trademark. Further, the evidence shows that the Respondent’s website at the Domain Name is designed to look like a website of an official or authorized reseller of the Complainant’s products. While the website contains no information about its owner, it purportedly sells in the Ukraine original IQOS systems and HEETS products. The Respondent’s website prominently displays the Complainant’s HEETS and IQOS trademarks and the Complainant’s photographs of its products. The Respondent is using the Complainant’s IQOS trademark in the “IQOS-SHOP” tagline appearing at the top of the website connected to the Domain Name. The photographs displayed on the Respondent’s website also show that the Respondent is using the Complainant’s IQOS trademark on the large storefront sign and on the internal store sign. The Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location. Based on the evidence presented, the Panel finds that the Domain Name was registered and is being used in bad faith. The Complainant has 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 Domain Name Olga Zalomiy 1 Section 1.8, WIPO Overview 3.0. 2 Section 1.11.2, WIPO Overview 3.0. 3 Section 2.1, WIPO Overview 3.0. 4 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. 5 Id. 6 Section 2.1, WIPO Overview 3.0. 7 Section 3.1.4, WIPO Overview 3.0.
Sole Panelist
Date: December 18, 2020
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