The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mikhail Izyumskii, 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 January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2021, 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 January 21, 2021, 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 22, 2021. On January 21, 2021, the Center sent an email to the Parties both in English and Russian regarding the language of the proceedings. On January 22, 2021, the Complainant confirmed its request that English be the language of the proceedings and relied on respective arguments in the Complaint. The Respondent has not provided 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, and the proceedings commenced on January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Respondent did not submit any response, and only addressed the Center with an informal communication on January 21, 2021. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on February 22, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on March 2, 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 The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc., an international tobacco company. The Complainant inter alia owns IQOS international trademark registrations, including registration No. 1218246, registered on July 10, 2014. The disputed domain name was registered on November 14, 2020 and resolves to a website featuring the Complainant’s trademark and selling tobacco smoking devices branded with the Complainant’s trademarks, as well as third parties’ competing products. The website is in English. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The disputed domain name entirely incorporates the Complainant’s trademark. Addition of the Top-Level Domain (“TLD”) “.website” does not add any distinctiveness to the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and to register the disputed domain name. The Respondent has clear intent to obtain commercial gain with a view to misleadingly divert consumers or tarnish the trademarks owned by the Complainant. The Respondent fails to pass the Oki Data test set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The website at the disputed domain name is designed to make an impression it is related or authorized by the Complainant, which is not true, and does not clarify the real Respondent’s relationship to the Complainant. The website at the disputed domain name offers for sale competing tobacco products. All these cannot be considered a bona fide offering of goods. The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademarks when registering the disputed domain name. The Respondent registered and used the disputed domain name with the intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or a product or service on its website or location. The website at the disputed domain name offers for sale competing tobacco products. The Respondent is using privacy protection service to hide its true identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent contacted the Center on January 21, 2021, asking general information about the proceeding and why the Complainant did not offer to purchase the disputed domain name to the Respondent. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed 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). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview 3.0 previous 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, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. 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 (i) the disputed domain name is in Latin script, (ii) the website under the disputed domain name is in English, (iii) Complainant being a Swiss entity has no knowledge of Russian language, (iv) the privacy registration service acting as a front company for the Respondent conducts its business in 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 to Russian. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. 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 According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the TLD “.website” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the Complainant’s trademark in its entirety. Considering the above the Panel finds that the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875). According to section 2.8.2 of the WIPO Overview 3.0 resellers or distributors using a domain name identical to a complainant’s trademark to undertake sales related to the complainant’s goods are not making a bona fide offering of goods and thus have no legitimate interest in such domain name. The Panel finds this applies in the present case, considering the risk of the misrepresentation by the disputed domain name identical to the Complainant’s trademark. The disputed domain name incorporates the IQOS trademark of the Complainant in its entirety. Since IQOS is a known trademark, and the disputed domain name is associated with the website offering IQOS products, the Panel finds that the Respondent must have been aware of the IQOS trademark when it registered the disputed domain name, and that it chose to target the IQOS trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513). The Respondent’s use of the identical disputed domain name for its website offering for sale overlapping products is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to the Policy. (see, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052). Noting the high risk of implied affiliation between the disputed domain name and the identical known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897). Furthermore, the Respondent provided no evidence that it otherwise holds a right or legitimate interests in the disputed domain name. Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products applying the Complainant’s trademarks shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered trademarks, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name resolves to a website featuring the Complainant’s trademarks and making false impression of being the Complainant’s local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith. The Respondent ignored its possibility to provide any good explanations of its good faith while registering and using the disputed domain name. Considering the above the Panel finds that the disputed domain name was registered and is being used in bad faith, therefore, the Complainant has established its case under paragraph 4(a)(iii) of 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 disputed domain name Taras Kyslyy
Sole Panelist
Date: March 13, 2021
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