The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Dmitrii Kuzmichev-Roshchin, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 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 December 29, 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 January 4, 2021. On December 29, 2020, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On January 4, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the Proceedings. 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 January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any formal response. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 25, 2021. 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 Philip Morris Products S.A., the Complainant in the present proceedings, is a part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a cigarette and tobacco manufacturing company, with products sold in approximately 180 countries. PMI has developed heated tobacco products, including IQOS. It is a heating device into which tobacco products under the brand names “HEETS” or “HEATSTICKS”” are inserted and heated to generate a nicotine-containing aerosol. The Complainant’s IQOS System is not currently sold in every country of the word, but in approximately 53 markets. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Complainant is the owner of, among others, the following trademark registrations: - International Registration IQOS (word) No. 1218246 registered on July 10, 2014; - International Registration (device) No. 1338099 registered on November 22, 2016; - International Registration (word/device) No. 1328679 registered on July 20, 2016; - International Registration HEETS (word) No. 1326410 registered on July 19, 2016. The Respondent registered the Domain Name on October 1, 2020. The Domain Name resolves to the website “www.sticksiqos.com“ - an online shop selling and offering inter alia the Complainant’s IQOS System (the “Website”). The Complainant has provided screen captures of the Website to which the Domain Name resolves at the time of filing the Complaint. 5. Parties’ Contentions A. Complainant The Complainant requests that the Domain Name be transferred to the Complainant. First, the Complainant submits that the Domain Name is confusingly similar to the IQOS trademark registrations of the Complainant. In this regard, the Complainant claims that the Domain Name adopts the Complainant’s IQOS trademark in its entirety, in addition to the non-distinctive and descriptive word “sticks”. The association with the Complainant is exacerbated by the use on the Website of the Complainant’s official product images and marketing materials without the Complainant’s authorization. Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name incorporating its IQOS trademark. Moreover, the Respondent does not make a legitimate non-commercial or fair use of the Domain Name. On the contrary, the Respondent intents to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. The Complainant acknowledges that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name at issue only if certain requirements are met. However, according to the Complainant these requirements are not met in the present case. Third, the Complainant submits that the Domain Name was registered and is being used in bad faith. In this regard, the Complainant argues that the Respondent knew of the Complainant’s IQOS trademark when registering the Domain Name. Also, the Respondent registered and used the Domain Name with the intention 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. On January 8, 2021 and January 9, 2021, the Respondent sent two informal emails in which he expressed his willingness to transfer the Domain Name. 6. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Language of Proceedings The language of the Registration Agreement for the Domain Name is Russian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since the Domain Name is in Latin script and not in Cyrillic script, and it resolves to a website is English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint and its annexes to Russian. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights. The Complainant holds several valid trademark registrations, including international registration IQOS (word) registered on July 10, 2014; international registration (device) registered on November 22, 2016; international registration (word/device) registered on July 20, 2016; or international registration HEETS (word) registered on July 19, 2016. The Respondent registered the Domain Name on October 1, 2020. Thus, the Complainant’s above mentioned trademark registrations precede the registration of the Domain Name. The Domain Name incorporates the Complainant’s IQOS trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). The Top Level Domain (“TLD”) in the Domain Name “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. This Panel accepts that the addition of the term “sticks” does not serve to distinguish the Domain Name from the Complainant's trademark. Panels have consistently held that 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 similar under the first element. See WIPO Overview 3.0, section 1.8. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (a) that it has made 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 prior to the dispute; or (b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or (c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence in the record that there are the Complainant’s trademark registrations for IQOS and HEETS, which predate the Respondent’s registration of the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name incorporating its IQOS trademark. Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain. The Respondent, which seems to be reselling the Complainant’s products, could make a bona fide offering of goods and services and thus have a legitimate interest in the Domain Name if its use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903. These requirements are that: (1) the Respondent must actually be offering the goods or services at issue; (2) the Respondent must use the website to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (3) the website must accurately disclose the Respondent’s relationship with the trademark owner; and (4) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in the Domain Name. In the present case, the above referred requirements are not met. The Respondent has not rebutted the Complainant’s allegations that it is not authorized distributor or reseller of the IQOS System. The Panel accepts that the Domain Name suggests an affiliation with the Complainant and its IQOS trademark, as the Domain Name wholly reproduces the Complainant’s IQOS trademark with the term “sticks”. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5. Moreover, the Complainant’s registered IQOS and HEETS trademarks, as well as an image of the inside of the Complainant’s official IQOS store are presented without the Complainant’s authorization on the Respondent’s Website. At the same time, a copyright notice is provided at the bottom of the Website, which claims copyright in the material presented on the Website and thereby strengths the impression of an affiliation with the Complainant. Furthermore, the Panel notes that the relationship between the Respondent and the Complainant is not disclosed on the Website in a clear and sufficiently prominent manner, as it is identified as “IQOS HEETS” / “HEETS Store”. This further perpetuates the impression of an official commercial relationship between the Respondent and the Complainant. A clear and sufficiently prominent disclaimer could lend support to circumstances suggesting the Respondent’s good faith. However, where the overall circumstances of a case point to the Respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. The panels have held that in such cases the Respondent’s use of a disclaimer could be considered as an admission by the Respondent that users may be confused. See WIPO Overview 3.0, section 3.7. In the present case, the Website contains the disclaimer stating, inter alia, that “IQOS, HEETS, "Marlboro", "Parliament" and HEATSTICKS are registered trademarks of PMI (Phillip Morris International Inc.) in the United States and/or other countries. (…) Sticks-iqos.com is not endorsed nor affiliated with PMI (Phillip Morris International Inc.)”. In the Panel’s view, such disclaimer cannot be considered clear and sufficiently prominent. The mere indication that the Respondent is not endorsed nor affiliated with the owner of the IQOS and HEETS trademarks in the “About Us” section of the Website does not prove the Respondent’s good faith. Also, this Panel acknowledges that the information included in the above-cited disclaimer is inaccurate, as it does not correctly identify the owners of the IQOS and HEETS trademarks (which are owned by the Complainant) and lack of their relationship with the Respondent. In addition, the Complainant’s IQOS System is primarily distributed through official/endorsed stores. The Panel believes that use of Complainant’s trademark and official images within the Website misled consumers regarding the relationship between the Respondent and the Complainant, as Internet users may falsely believe that the Respondent is an official/endorsed distributor of IQOS products. Moreover, this Panel accepts that Internet users visiting the Website will reasonably expect to find a website commercially linked to the Complainant. This finding is supported by the use of the Complainant’s official product images and marketing materials on the Website. Given the above, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. In the present case, the Complainant’s rights in IQOS trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name, which is supported by the type of products offered on the Website indicating that the Respondent operates in the heated tobacco business, as well as the content of the disclaimer cited in the section 6.B. above. Also, it has been proven to the Panel’s satisfaction that Complainant’s IQOS trademark is well-known, unique to the Complainant and not commonly used to refer to tobacco products or electronic devices. Thus, the Respondent could not likely reasonably ignore the reputation of the products the trademark identifies. The Panel accepts that by reproducing the Complainant’s registered trademark in the Domain Name and the title of the Website, the Respondent suggests to be an official online retailer of the Complainant’s IQOS System. There is thus little doubt that Respondent intended to earn profit from the confusion created with Internet users. In consequence, the Panel finds that the evidence in the record demonstrates that the Respondent registered and uses the Domain Name deliberately in order to take advantage of the Complainant’s reputation and to give credibility to its operations. Thus, for the reasons discussed above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s trademark and that the Complainant has proven that the Respondent’s registration and use of the Domain Name was in bad faith, according to paragraphs 4(b)(iv) and 4(a)(iii) under the Policy. 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 Piotr Nowaczyk
Sole Panelist
Date: March 5, 2021
Full & Egal Universal Law Academy