WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc., / Andrii Petunin
Case No. D2017-1026
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Andrii Petunin of Kyiev, Ukraine who are Self Represented.
2. The Domain Name and Registrar
The disputed domain name <iqos.rocks> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2017, 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 May 31, 2017, 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 June 1, 2017. The Center received an informal email communication from the Respondent on June 2, 2017.
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 June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017.
The Center received further informal emails from the Respondent offering to sell the disputed domain name on June 9, 2017, and on June 13, 2017. No formal Response was filed with the Center.
The Center appointed James Bridgeman as the sole panelist in this matter on July 14, 2017. 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 an international tobacco company, with products sold in approximately 180 countries with a large portfolio of trademarks and branded products including "IQOS" which is a precisely controlled heating device into which a specially designed tobacco product under the brand names "Heets" and "Heatsticks" is inserted and heated to generate a flavorful nicotine-containing vapor.
The Complainant owns a large portfolio of trademarks for its smoke-free products including:
United States of America Trademark IQOS (word) No. 4763090 registered on June 30, 2015;
Russian Trademark IQOS (word) No. 556749 registered on November 9, 2015;
International Registration IQOS (word) No. 1218246 registered on July 10, 2014, designating Antigua and Barbuda, Bahrain, Bonaire, Saint Eustatius and Saba, Colombia, Curaçao, European Union, Georgia, Israel, India, Iceland, New Zealand, Philippines, Saint Maarten, Tunisia, Turkey, Albania, Armenia, Bosnia and Herzegovina, Belarus, Cuba, Algeria, Egypt, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Republic of Moldova, Montenegro, The former Yugoslav Republic of Macedonia, Mongolia, Serbia, Ukraine and Viet Nam.
The Respondent registered the disputed domain name using a privacy registration service. The Respondent is not known or in any way related to the Complainant or any of its affiliates and is not authorized to use the IQOS trademark.
The disputed domain name was registered on November 26, 2016. The disputed domain name previously resolved to a website purporting to offer the Complainant's products for sale. The disputed domain name no longer resolves to an active website.
5. Parties' Contentions
The Complainant relies on its rights in the abovementioned registered trademarks and claims rights at common law through its extensive use of the IQOS mark which was first introduced in Nagoya, Japan in 2014 and is used in relation to the Complainant's smoke free products in 20 markets across the world through the Complainant's official stores and websites.
The Complainant submits that the disputed domain name is identical to the Complainant's IQOS trademark, arguing that it is well established that the generic Top-Level Domain ("gTLD") should be viewed as a standard registration requirement and disregarded for the purposes of comparing the disputed domain name and the Complainant's trademark.
The Complainant submits that the Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent, who is using a privacy service, to use any of its trademarks or to register the disputed domain name incorporating its IQOS trademark.
The Complainant has provided evidence in the annex to the Complaint and submits that the disputed domain name <iqos.rocks> is linked to an alleged online shop offering the Complainant's IQOS product. The Respondent's website almost identically copies the design of the Complainant's official IQOS website.
Since the Complainant's IQOS product is exclusively distributed through the Complainant's official stores and websites, the Complainant cannot be sure whether the products offered through the disputed domain name are the Complainant's genuine IQOS products.
The website to which the disputed domain name resolves does not show any details regarding the provider of the website nor does it acknowledge that the Complainant as the real brand owner. The contact details on the website do not provide any specific information on the provider, leaving the user under the impression that the website is maintained by the Complainant or one of its official distributors.
The Complainant submits that the Respondent is not an authorized resellers of the IQOS products and the website to which the disputed domain name resolves does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods.
The Complainant argues that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"). The UDRP panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied: that the respondent must use the disputed domain name to sell only the trademarked goods; that the respondent's website itself must accurately disclose the respondent's relationship with the trademark owner; and that the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
A common principle in all cases regarding the Oki Data scenario is that the use of a domain name cannot be "fair" if it suggests affiliation with the trademark owner (see AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416 (<serviceelectroluxlampung.com>) and the decisions provided therein).
In the present case the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the disputed domain name reproduces the IQOS trademark in its entirety. The suggestion of a commercial relationship between the website to which the disputed domain name resolves and the Complainant is further emphasized by the fact that the website almost identically adapts the design characteristics of the Complainant's official website. The website to which the disputed domain name resolves does not reveal the identity of the website provider; prominently presents the Complainant's IQOS trademark and logo, particularly on the top of the website; and in no way clarifies the relationship of the website to the Complainant.
Furthermore because it is known that the Complainant's IQOS products are usually distributed only through official stores and the Complainant's websites, Internet users are being misled regarding the relationship between the website and the Complainant.
The Complainant states that there is no evidence that any legitimate noncommercial or fair use is being made of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Alleging that the disputed domain name was registered and is being used in bad faith, the Complainant argues that it is evident from the use to which the disputed domain name is being put, that the Respondent knew of the Complainant's IQOS trademarks when registering the disputed domain name. The disputed domain name was used as the address of a website offering the Complainant's IQOS products immediately after it was registered.
Furthermore, the Complainant points out that the term "IQOS" is a purely imaginative term and has no inherent meaning.
The Complainant submits that the use to which the disputed domain name has been put, as outlined above, shows that the disputed domain name was registered with the intention of attracting, 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 its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant submits that by reproducing the Complainant's trademark in the disputed domain name and by copying the Complainant's official website design, the website to which the disputed domain name resolves clearly suggests that the Complainant or an affiliated dealer is the source of the website. The fact that the website does not provide any information on the true identity of the website provider clearly shows that the impression is intentionally created that the products offered on the website are provided by the Complainant or at least an official dealer in order to mislead users on the source of the website and thereby attract, for commercial gain, Internet users to the website.
Finally, referring to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 3.6 and the cases referenced therein, the Complainant submits that it is also well established that the fact that the Respondent is using a privacy protection service to hide its true identity in itself may constitute a factor indicating bad faith.
No formal Response was received.
On June 9, 2017, the Respondent sent an email to the Center, copying the Registrar, his proxy service provider and the Complainant, stating: "Thank you for your email. This domain, iqos.rocks belong to my company. In case your client needs it, we can sell it for 6000 EUR. For that price he will get: 1) Quick delegation of the rights, right after the payment 2) If they will agree on the price and the deal, we will close the business the same day and redirect our customers to the website they say. Kind regards, Andrii"
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided convincing evidence of its rights in the IQOS trademark acquired through its ownership of the abovementioned trademark registrations and its extensive use of the mark in connection with the sale of its products since 2014.
The disputed domain name is identical to the Complainant's IQOS mark as in the circumstances of the present case the gTLD <.rocks> extension may be ignored for the purposes of comparison.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is well established that once a complainant sets out a prima facie case that a respondent has no rights or legitimate interests a disputed domain name the burden of production shifts to the respondent to come forward with evidence in support of the existence of such rights or interests.
In this case, the Complainant has submitted that it has no commercial relationship with the Respondent; that it has not granted any right or license to the Respondent to use its IQOS trademark in a domain name or otherwise and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Anticipating a potential argument based on the rights of resellers of a complainant's products, the Complainant has argued strongly that the Respondent has not acquired any such rights to use the IQOS markbased on the rights of resellers of a complainant's products citing Oki Data. As noted in the WIPO Overview 3.0:
"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."
The Complainant has convincingly argued in the Complaint that the Respondent does not meet the 'Oki Data test' because the disputed domain name is identical to the Complainant's IQOS mark and contains no distinguishing elements; there is no evidence that the Respondent is selling the Complainant's trademarked goods on the website to which the disputed domain name resolves; and the Respondent's website does not disclose that there is no commercial relationship between the Complainant as owner of the IQOS mark and the Respondent.
The Respondent has failed to address the prima facie case made out in the Complaint has merely responded informally offering to sell the disputed domain name.
In the circumstances the Respondent has not produced any evidence of its rights or legitimate interests in the disputed domain name and the Complainant is entitled to succeed on the second element of the test in Paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant's IQOS mark and the disputed domain name each consist of the same distinctive invented word. It is most implausible that the disputed domain name was registered without knowledge of the Complainant, its mark and its reputation.
Since it was registered, the disputed domain name has been used as the address of a website which purports to sell the Complainant's products by copying the design features of the Complainant's website and thereby creating the false and misleading impression among Internet users that the Complainant has some connection or affiliation with the Complainant.
Furthermore, when given the opportunity to address the Complainant's submissions the Respondent responded with an offer to sell the disputed domain name for EUR 6,000 which would indicate that the disputed domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the IQOS trademark for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name.
While use of proxy registration service is permissible and there are often valid bona fide reasons for a registrant to elect for the privacy afforded by such a facility, in the circumstances of the present case the Respondent's use of the proxy registration adds to the weight of evidence that the disputed domain name was registered and is being used in bad faith.
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 <iqos.rocks> be transferred to the Complainant.
Date: July 18, 2017