The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Denis S Vlasenko, Private Person, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 2021, 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 October 8, 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 October 11, 2021.
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 October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 1, 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 BackgroundThe following facts are undisputed.
The Complainant is a Swiss company and a subsidiary of Philip Morris International, Inc., a leading international tobacco and smoke-free products company, with products sold in approximately 180 countries.
IQOS is a tobacco heating system, into which specially designed tobacco sticks of several brands, owned by the Complainant, are inserted and heated to generate a flavorful nicotine-containing aerosol (the “Product”). The Product is available in key cities around 67 markets across the world.
The Complainant is the owner of several trademark registrations, including, but not limited to the International Registration IQOS (word mark), inter alia designating Russia and Ukraine, with registration No. 1338099, with a registration date of November 22, 2016, for services in class 35 (hereinafter referred to as the “Trademark”).
The Domain Name was registered on September 15, 2021. At the time of filing the complaint, the Domain Name was linked to a website, allegedly providing hyperlinks to the Complainant’s official Ukraine website, Telegram page, YouTube channel, and Instagram profile, as well as selling and offering test samples of the Product (the “Website”).
5. Parties’ Contentions A. ComplainantInsofar as relevant for deciding this matter, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademark. The Trademark is completely incorporated in the Domain Name, in addition to the non-distinctive and descriptive words “test” and “drive”. Any Internet user when visiting the Website will reasonably expect to find a website commercially linked to the Complainant.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent was not authorized, licensed, or permitted to register or use the Domain Name and there is no connection between the Complainant and the Respondent. Further, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. In fact, the Respondent shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumer or to tarnish the Trademark. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the Website provided under the Domain Name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods. Based on the latter, the Complainant states that the Oki Data criteria are not met in this case and that the use of the Domain Name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent. The Respondent prominently uses the IQOS logo on the Website. The Website further uses the Complainant’s official marketing materials without authorization, while at the same time falsely claiming copyright in this material. This use supports the false impression, that the Website is endorsed by the Complainant, which it is not. The Website includes no information regarding the identity of the provider of the Website, which is only identified as “IQOS”.
The Domain Name was registered and has been used in bad faith. The Respondent was aware of the Complainant’s Trademark and started offering the Product on the Website immediately after registering the Domain Name. Furthermore, it is evident that 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 Trademark as to the source, sponsorship, affiliation, or endorsement of the Website or location or of a product or service on the Website or location, which constitutes registration and use in bad faith. In addition, the Respondent might use the Domain Name for a phishing scheme, which is also not a bona fide offering of goods or services and confirms the registration and use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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 Domain Name has been registered and is being used in bad faith.
Noting the burden of proof on the Complainant, the Respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The Respondent’s default is not necessarily an admission that the Complainant’s claims are true. See in this regard WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent”.
A. Identical or Confusingly SimilarThe Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark, followed by the two elements “test” and “drive”. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the additional terms do not prevent a finding of confusing similarity.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate InterestsThe Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation 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 notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “iqos-test-drive” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant, to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.
Further, the Complainant's assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the Domain Name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorized by the Complainant to use the Trademark.
The Respondent apparently used the Domain Name to operate a website to offer test samples of the Product.
Assuming that this offer is genuine, which prima facie seems to be doubtful, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In between, certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand , may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the UDRP panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests. (See WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Website effectively impersonates or suggests endorsement by the Complainant given the prominent use on the Website of the Complainant’s logo, the use of official marketing materials, in addition to the lack of an adequate disclosure of the identity of the provider of the Website.
Such impersonation and suggested endorsement is sufficient to conclude that the Respondent lacks rights or legitimate interests.
Even if the so-called Oki Data test (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) would have to be applied, the Respondent clearly fails this test as the Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it has no particular connection with the Complainant.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad FaithThe Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
Besides the above-referenced misleading use of the Domain Name, the Complainant has also sufficiently substantiated that the Respondent uses the Domain Name for phishing schemes, such as obtaining personal and financial details from internet users and/or relevant consumers. Visitors of the Website are redirected to a separate webpage requesting personal and financial details. This would clearly lead to a finding of registration and use of the Domain Name in bad faith. The unrebutted facts of the case clearly show that the Complainant was aware of the Trademark and registered the Domain Name with the purpose to mislead internet users, and subsequently used the Domain Name, in bad faith.
Therefore, the Panel is satisfied that the third element of the Policy is met.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Willem J. H. Leppink
Sole Panelist
Date: December 15, 2021