The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Wudi Dachengxiaocheng, Yangdong of Changsha, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2018, 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 July 11, 2018 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 amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to the 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 July 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 10, 2018. 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., a leading international tobacco company. The Complainant owns IQOS trademark registrations as follows:
- Chinese registration No. 16314286, registered on May 14, 2016;
- Chinese registration No. 16314287, registered on May 14, 2016;
- Hong Kong registration No. 302983609, registered on May 2, 2014;
- International Registration No. 1218246, registered on July 10, 2014;
- International Registration No. 1329691, registered on August 10, 2016.
The disputed domain name was registered on March 12, 2018 and is used for a website selling tobacco devices and accessories branded with the Complainant's trademarks alongside third-party products that compete with those of the Complainant. The website is in Chinese. A privacy service was used for registration of the disputed domain name. 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 misspelling it. Addition of the country code Top‑Level Domain ("ccTLD") ".cc" 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 sells competing accessories. 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. 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. Using the Complainant's trademarks, official product images and pictures of the Complainant's official stores the Respondent intentionally makes false impression its website belongs or is related to the Complainant. The Respondent is using the disputed domain name to sell not only the Complainant's goods, but also competing products of other commercial origin. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
According to section 1.11.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ( "WIPO Overview 3.0") the applicable Top Level Domain ("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 TLD ".cc" 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 confusingly similar to that mark for purposes of UDRP standing. The disputed domain name incorporates the entirety of the Complainant's trademark.
According to section 1.9 of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The panel considers the disputed domain name consisting of intentional misspelling of the Complainant's trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. 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 2.8.1 of the WIPO Overview 3.0 resellers or distributors using a domain name containing a complainant's trademark to undertake sales related to the complainant's goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the "Oki Data Test"), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant's relationship with trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy the second and the third above requirements by selling competing third-party products and by not disclosing its actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent's use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent's use of the disputed domain name cannot be considered bona fide.
Furthermore, the Respondent provided no evidence that it otherwise holds rights 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. C. Registered and Used in Bad Faith
The Respondent's use of the disputed domain name to purport to sell the Complainant's products applying various 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, official product images and pictures of the Complainant's official stores and making false impression of being owned or authorized by the Complainant's 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.
Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here also supports the Panel's finding that the registration of the disputed domain name was 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 believes 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 be transferred to the Complainant.
Taras Kyslyy
Sole Panelist
Date: August 23, 2018
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