WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Almas Tagybergenov
Case No. D2018-0243
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Almas Tagybergenov of Almaty, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <iqos-delivery-uae.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2018. On February 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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, and stating that the language of the registration agreement is English.
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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2018.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 19, 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 that is a member of a group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. In the course of replacing combustible cigarettes with smoke-free products PMI developed a precisely controlled heating device, sold under the brand name IQOS, into which a specially designed tobacco product is inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS product was first introduced in Japan in 2014 and is currently available in key cities in approximately 30 markets around the world. To date the IQOS product has been distributed exclusively through PMI’s official stores and websites.
The Complainant owns many trademark registrations in a large range of countries for IQOS (both in word and device form) dating from at least as early as July 2014. These trademark registrations include a United Arab Emirates word trademark registration for IQOS (Registration No. 211137, registered on June 12, 2016), and a United Arab Emirates device trademark registration for a picture of a flying hummingbird (Registration No. 256080, registered on June 29, 2016).
The disputed domain name was registered on March 20, 2017. The Complainant has provided a screenshot, dated January 29, 2018, showing that the disputed domain name resolved to an online shop purporting to offer for sale the Complainant’s IQOS product. The screenshot shows the Complainant’s IQOS trademark and displays a picture of a humming bird at the top of the website, where the name of the website is usually displayed. As at the date of this decision, the disputed domain name resolves to a website containing one page with the words: “Maintenance mode Sorry for the inconvenience. Our website is currently undergoing scheduled maintenance. Thank you for your understanding.”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) it identically adopts the Complainant’s IQOS trademark; (ii) the applicable Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test; and (iii) it reproduces the IQOS trademark in its entirety along with the descriptive term “delivery” and the descriptive letters “uae” referring to the United Arab Emirates, which together clearly indicate the United Arab Emirates (“UAE”) as being the geographical market of the website.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) 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 trademark; (ii) 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; (iii) the Respondent is not an authorized reseller of the IQOS product; (iv) neither the Complainant nor its affiliates offer for sale in the UAE a product under the IQOS trademark, and hence the offering on the online shop at the website resolving from the disputed domain name is further misleading, in that it suggests to consumers that they can legitimately purchase this product in the UAE; (v) the Respondent’s use of the disputed domain name is not fair, because it falsely suggests at least an affiliation with the Complainant by virtue of the disputed domain name reproducing the Complainant’s IQOS trademark in its entirety and resolving to a website that prominently displays the Complainant’s humming bird device trademark; (vi) the website resolving from the disputed domain name does not reveal the identity of the website provider, and includes no information clarifying the Respondent’s relationship to the Complainant; and (vii) the “About Us” section of the website resolving from the disputed domain name states “Buy IQOS and its accessories in UAE”, which clearly misleads users regarding the relationship between the website and the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) 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; (ii) the Respondent started offering the Complainant’s IQOS product immediately after registering the disputed domain name; (iii) the term IQOS is a purely imaginative term and has no inherent meaning; (iv) the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website; and (iv) the website resolving from the disputed domain name clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark IQOS, and adds (with separating hyphens) the strings “delivery” and “uae”. The distinctive component of the disputed domain name is the Complainant’s trademark. The addition of the descriptive word “delivery” and the geographic term “uae” (being the acronym for United Arab Emirates) does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its IQOS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that purported to offer the IQOS product for delivery to the UAE. The UAE is not a market in which the Complainant offers the IQOS product. The content of the website not only fails to identify the lack of any relationship between the Complainant and the operator of the website, it wrongly suggests the existence of such a relationship. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered some years after the Complainant first registered its IQOS trademark. The evidence on the record provided by the Complainant with respect to the use of its IQOS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been 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-delivery-uae.com> be transferred to the Complainant.
Andrew F. Christie
Date: April 3, 2018