WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Oleh Sajtarly

Case No. D2018-0227

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Ivanov, Makarov & Partners, Russian Federation.

The Respondent is Oleh Sajtarly of Odessa, Odesskaya obl., Ukraine.

2. The Domain Name and Registrar

The Disputed Domain Name <iqosoriginal.shop> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 February 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2018.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 6, 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 Philip Morris Products S.A. is an affiliated company of Philip Morris International Inc. (jointly referred to as “PMI”), a leading international tobacco company, with products sold in approximately 180 countries.

IQOS is one of PMI’s brands developed and used for smoke-free tobacco products. IQOS was first introduced in Nagoya, Japan in 2014 and now is available in around 30 markets across the world, including in Ukraine, where the Respondent resides. In the Ukrainian market, the official stores are located in the cities of Kiev, Kharkiv, Dnipro, Lviv and Odessa. The IQOS products are also sold online at “www.iqos.com.ua”.

The trademark IQOS has been registered for goods in Class 34 in a variety of countries, including in Ukraine, under International Registrations No. 1218246 dated July 10, 2014, 1329691 dated August 10, 2016 and the US Trademark Registration No. 4763090 dated June 30, 2015.

The Respondent registered the Disputed Domain Name <iqosoriginal.shop> on June 23, 2017.

The website under the Disputed Domain Name is under operation allegedly for sale of products under the IQOS brand.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

The Complainant contends that the Complainant is the registered owner of trademark registrations for IQOS in a variety of countries all over the world, including in the country of the Respondent’s residence (Ukraine). All these trademark registrations predate the Disputed Domain Name.

The Complainant argues that the Disputed Domain Name is confusingly similar to the IQOS trademarks as it starts with the invented and protected word IQOS and continues with generic terms “original” and “.shop”. It asserts that TLD “.shop” indicates the category of the websites, which are online shops for some products or homepages for traditional offline shops. It is viewed as a standard registration requirement for domain name and thus, is disregarded under the confusing similarity test. Further, the addition of the generic term “original” in the Disputed Domain Name is insufficient in itself to avoid a finding of confusing similarity.

Thus, the Disputed Domain Name is confusingly similar to the Complainant’s prior registered trademarks.

ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant argues that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its IQOS trademarks.

Further, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant.

The website under the Disputed Domain Name does not meet requirements for a reseller or distributor making a bona fide offering of goods/services. In addition, the website under the Disputed Domain Name does not reveal the identity of the website provider, and the Respondent is not commonly known by or associated with the Complainant’s registered IQOS trademark. Thus, the use of the Disputed Domain Name does not establish a legitimate interest on behalf of the Respondent.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant asserts 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.

Furthermore, the word “iqos” is a purely imaginative term, it has no inherent meaning and it was invented by the Complainant specifically for the commercialization of its new and innovative reduced-risk tobacco heating system. Thus, it is highly unlikely that the Respondent registered the Disputed Domain Name without prior knowledge of the IQOS trademarks of 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 IQOS trademark as to the source, sponsorship, affiliation or endorsement of its website or a product/service. Additionally, the website does not provide any information on the true identity of the website provider.

With such arguments, the Complainant submits that the Complainant intends to mislead users on the source of the website and thereby attract, for commercial gain, Internet users to the website. Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to IQOS, well before the Disputed Domain Name is registered. Also, the Complainant has sufficiently demonstrated and evidenced that it has an extensive use of its trademark for its commercial activities, in particular for developing and selling smoke-free tobacco products. Through such use, the IQOS mark has become known around the world in relation to the Complainant’s smoke-free products.

Secondly, the Disputed Domain Name comprises the Complainant’s distinctive IQOS mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the generic term “original”. As guided under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11, the Panel finds that “iqos” remains the dominant element in the Disputed Domain Name. It is well established that the addition of generic term (such as “original”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Roche Products Inc. v. David Poland, WIPO Case No. D2011-1284).

Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the TLD “.shop” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the first element purposes, since the TLD “.shop” indicates the category of websites that relate to shops, either online or traditional offline.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s IQOS trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark IQOS.

Considering whether or not the Respondent is making a bona fide offering of goods and services via using the Disputed Domain Name, the Panel finds that on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s logo-typed trademark and official marketing material and product images.

In addition, the Disputed Domain Name also comprises the generic term “original”, which may be understood by the public as addressing a website originating from the trademark owner, or being authorized or endorsed by the trademark owner. Hence, for all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services.

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), 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:

(i) circumstances indicating that you have registered or you 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 documented out-of-pocket costs directly related to the domain name; or

(ii) you 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 have engaged in a pattern of such conduct; or

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

(iv) 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s IQOS trademark has been registered on a worldwide basis. The Complainant’s IQOS trademark has been registered and used in, among other countries, Ukraine where the Respondent resides. Besides functioning as a trademark, “IQOS” is also being used in the Complainant’s domain names, such as <iqos.com.ua>, which all well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the IQOS trademark in its entirety, adding only the generic term “original”. Given the extensive use of the IQOS trademarks by the Complainant, which occurs worldwide, including in Ukraine, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its IQOS trademarks when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it still resolves to an active website with contents appearing unchanged. It can be inferred from this fact that the Respondent is trying to gain interests from the use of the Disputed Domain Name despite being informed by the Center of the administrative proceeding through its notifications and written notice. This is another indication of bad faith.

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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, <iqosoriginal.shop>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: March 19, 2018