WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Viktor Gubin

Case No. D2020-2196

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Viktor Gubin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <iqosystem.com> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 21, 2020, 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 August 24 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 August 24, 2020.

On August 24, 2020, the Center sent an email communication to the Parties, in English and Russian, regarding the language of the proceeding. The Complainant requested English to be the language of the proceeding on August 24, 2020. On August 24, 2020, the Respondent sent several emails in English asking what the Complaint was about and requesting explanation in Russian.

On August 25 and September 1, 2020, the Respondent indicated that the disputed domain name had been deleted. On August 25 and September 1, 2020, the Center sent possible settlement emails to the Parties. Upon the Complainant’s request, the proceeding was suspended on September 7, 2020 until October 7, 2020. Upon the Complainant’s request, the proceeding was reinstituted on October 16, 2020.

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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. Apart from several informal emails from the Respondent as indicated above, no formal Response was filed with the Center. On November 19, 2020, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Mariya Koval as the sole panelist in this matter on November 30, 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 part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to “PMI”). PMI is a leading international tobacco company, operating on more than 180 markets.

PMI has developed the IQOS (the “IQOS Products”), which is a precisely controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. PMI launched its products under the IQOS trademark (the “IQOS Trademark”) in 2014. Today the IQOS Products are available in around 53 markets across the world. Due to USD 6 billion investment and extensive international sales and marketing efforts, the IQOS Products and the IQOS Trademark have achieved an international success and reputation, and at present over 11 million customers use the IQOS Products worldwide.

The Complainant owns a large portfolio of IQOS Trademark registrations around the world, including the Russian Federation, in particular, but not limited to:

- International Registration IQOS No. 1338099, registered on November 22, 2016, designating, among others, the Russian Federation;

- Russian Federation Trademark IQOS No. 556749, registered on November 9, 2015 in respect of goods in International classes 9, 11 and 34;

- Russian Federation Trademark IQOS No. 686934, registered on December 10, 2018 in respect of goods and services in International classes 9, 12, 14, 16, 18, 21, 25, 34, 35, 37, 41 and 43.

The Complainant operates a number of domain names containing its IQOS Trademark for promotion of its goods, among which are <iqos.com>, <iqos.ru>, <iqos.us> and many others.

According to the current record, the Disputed Domain Name was registered on January 2, 2020. At the date of this decision, the website under the Disputed Domain Name is active and directs to the website where repair and maintenance services for IQOS devices are proposed. The website is provided in the Russian language clearly indicating that the website is dedicated to Russian consumers.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s IQOS Trademark. The Disputed Domain Name is linked to an online shop allegedly offering repair and maintenance services for the Complainant’s IQOS System. The website is provided in Russian. The fact that the website is indicating all prices in Russian currency, as well as presenting the designation of “РЕМОНТ УСТРОЙСТВА IQOS В ЕКАТЕРИНБУРГЕ” (informal translation “IQOS DEVICE REPAIR IN YEKATERINBURG”) being a city in the Russian Federation, clearly indicates that the website is directed to the Russian Federation. The Complainant further contends that any Internet user when visiting a website provided under the Disputed Domain Name will reasonably expect to find a website commercially linked to the owner of the IQOS Trademark. This unlawful association is exacerbated by the use of the Complainant’s official product images and marketing materials without the Complainant’s authorization.

The Complainant asserts that the Respondent lacks any rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS Trademark (or a domain name, which will be associated with the Trademark). The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting Internet users or to tarnish the trademark owned by the Complainant. Firstly, the Respondent is not an authorized distributor, reseller or repair services operator of the IQOS System. Secondly, the website provided under the Disputed Domain Name does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods or services.

The Disputed Domain Name in itself suggests at least an affiliation with the Complainant and its IQOS Trademark, as the Disputed Domain Name wholly reproduces the Complainant’s registered trademark together with the non-distinctive addition and the term “ystem”. In addition, the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered logo appearing at the top left of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider. The website further uses the Complainant’s official product images and marketing materials without authorization. The website also includes no information regarding the identity of the provider and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant.

The Complainant alleges that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent knew of the Complainant’s IQOS Trademark when registering the Disputed Domain Name. The Respondent started offering repair services for the Complainant’s IQOS System immediately after registering the Disputed Domain Name. Furthermore, the term “Iqos” is purely an imaginative term and unique to the Complainant. The term “Iqos” is not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the Disputed Domain Name, without the intention of invoking a misleading association with the Complainant.

It is also evident from the Respondent’s use of the Disputed Domain Name that the Respondent registered and used the Disputed 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 or location or of a product or service on its website or location, which constitutes registration and use in bad faith. By reproducing the Complainant’s registered trademark in the Disputed Domain Name, the Respondent’s website clearly suggests the Complainant or an affiliated and authorized repair services operator of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images and marketing materials.

B. Respondent

The Respondent sent several informal email communications to the Center, where he inquired what the Complaint was about and indicated that he was ready to delete the Disputed Domain Name and had deleted it.

6. Discussion and Findings

According to the paragraph 4(a) of the Policy, a complainant must prove the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements to succeed.

6.1. Preliminary Issue: Language of the Proceeding

The Complaint was submitted in English. The Registrar confirmed that 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.

The Complainant has filed the Complaint in English and requests that English to be the language of this proceeding due to the following reasons:

- the Disputed Domain Name is in Latin script and not in Cyrillic script indicating that the website is directed to, at the very least, an English-speaking public.

- the Complainant being a Swiss entity has no knowledge of Russian;

- the privacy registration service acting as a front company for the Respondent, in this particular instance, appears to also conduct its business in English.

The Complainant is a Swiss company and the Complainant’s representative is a South African company. Accordingly, neither the Complainant nor its representative are able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.

The Disputed Domain Name and generic Top-Level Domain (“gTLD”), both are in Latin characters and not Cyrillic characters.

Moreover, the Respondent sent several email communications in English, and appears to be willing to settle the dispute with the Complainant.

Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has established rights in its IQOS Trademark in view of large number of registrations around the globe, including the Russian Federation.

The Disputed Domain Name incorporates the IQOS Trademark in its entirety with addition of the term “ystem”, which is supposed to mean the word “system” with omission of the letter “s”, combined with the gTLD suffix “.com”. The gTLD “.com” typically is not taken into account for purposes of the first element under the Policy. In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 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. In this case, the addition of the term “ystem” to the IQOS Trademark does not prevent a finding of confusing similarity.

Moreover, 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.

In light of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s IQOS Trademark and respectively, the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, its 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 it 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 Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has neither any connection with the Complainant, nor has been authorized or licensed by the Complainant to use its IQOS Trademark or to register of any domain name incorporating the Complainant’s trademark. The Respondent, being the natural person, obviously is not commonly known by the IQOS Trademark or the Disputed Domain Name.

At the date of this decision and on the date of the filing of the Complaint the Disputed Domain Name resolves to an active website in Russian, where repair and maintenance services for the Complainant’s IQOS System were purportedly offered. The website contains indications “РЕМОНТ УСТРОЙСТВА IQOS В ЕКАТЕРИНБУРГЕ” (in English “IQOS DEVICE REPAIR IN YEKATERINBURG”) and “IQOSERVICE - это сеть сервисных центров, осуществляющих ремонт устройств IQOS” (in English “IQOSERVICE is a network of service centers that repairs IQOS devices”. Moreover, the website under the Disputed Domain Name contains the Complainant’s registered trademark at the top. Furthermore, the website contains a number of the Complainant’s official product images and marketing materials without the Complainant’s authorization. Such use of the Disputed Domain Name obviously strengthens the false impression of an affiliation with the Complainant.

According to the WIPO Overview 3.0, section 2.8.1 panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in 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 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.

As is seen from the circumstances of this case the website under the Disputed Domain Name does not disclose the relationship between the Complainant and the Respondent. On the contrary, it creates a false impression that the website is the Complainant’s official website or related to the Complainant. Thus, the Respondent does not satisfy the conditions of the Oki Data test.

The Panel concludes that such use of the Disputed Domain Name cannot be considered as a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.

Furthermore, the Disputed Domain Name was registered through a privacy service, that further attests to the fact that the Respondent does not have any rights or legitimate interests in it, see, e.g., Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you [the respondent] have registered or you [the respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or

(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.

The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its trademark or to register the Disputed Domain Name incorporating its trademark.

The Disputed Domain Name incorporates the Complainant’s IQOS Trademark in whole and redirects to the website, that creates a strong likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name. The Internet users might have well been under the impression that it is a website created and operated by a certified service provider of the Complainant that is not true.

Taking into account the reputation and fame of the Complainant’s IQOS Trademark, the registration of the Disputed Domain Name is clearly intended to mislead and attract consumers to the Disputed Domain Name and to the website under it. The use to which the Disputed Domain Name has been put clearly indicates that the Respondent sought to take advantage of the goodwill associated with the Complainant’s IQOS Trademark when registering the Disputed Domain Name.

The Panel finds that, taking into consideration all circumstances of this case, the Disputed Domain Name has been registered and used in bad faith, with well awareness of the Complainant’s IQOS Trademark and with the intention to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s IQOS Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Therefore, having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <iqosystem.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 16, 2020