WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Hristo Aleksandrov
Case No. D2018-1939
1. The Parties
The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Hristo Aleksandrov of Varna, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <bgiqos.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 August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on August 29, 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 August 30, 2018.
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 September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. On September 5, 2018, at the request of the Complainant, the administrative proceeding was suspended and on September 19, 2018 it was reinstituted. The new due date for Response was October 8, 2018.
The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 9, 2018.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 17, 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 part of a leading multinational tobacco company group with an extensive brand portfolio and products sold internationally, which has developed a number of reduced risk products to substitute combustible cigarettes, one of which is branded under the trademark IQOS.
IQOS products are controlled heating devices into which specially designed tobacco products (under the brand names HEETS and HEATSTICKS) are inserted and heated to generate a flavorful nicotine-containing aerosol, having a pocket charger specially designed to charge the IQOS holder. These products are available internationally in around 38 markets, including Bulgaria (where the Respondent is located), and are distributed through the Complainant’s official stores and websites, as well as selected authorized distributors and retailers.
The Complainant holds several trademark registrations throughout the world for its trademarks IQOS and HEETS, alone or in combination with designs, of which the following are sufficiently representative for the present proceeding:
- International Trademark No. 1218246 IQOS, registered July 10, 2014, in classes 9, 11 and 34, designating the European Union among others;
- International Trademark No. 1329691 IQOS, figurative, registered August 10, 2016, in classes 9, 11 and 34, designating the European Union among others;
- International Trademark No. 1328679 HEETS, figurative, registered July 20, 2016, in classes 9, 11 and 34, designating the European Union among others;
The disputed domain name was registered on July 20, 2018, and it is linked to a website provided in Bulgarian, which allegedly offers the Complainant’s IQOS and HEETS branded products, as well as other competing brand products from different commercial origin.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The Complainant says its company and its IQOS products enjoy worldwide reputation due to extensive international sales and marketing efforts, producing evidence of it.
The Complainant asserts the Respondent is not related to its group, and is not authorized to use the IQOS trademarks. However, its Website is clearly suggesting being an official dealer by prominently using its trademark accompanied by the geographic indication Bulgaria at its top left corner (common location for the name of the online shop and/or the Website provider). Further, this Website uses various of the Complainant’s official product images and marketing material, not showing any details regarding its real owner of this site and not acknowledging the Complainant’s rights. Further, this Website offers some official IQOS branded accessories as well as competing accessories of other commercial origin (stickers and cases).
The Complainant further asserts the disputed domain name reproduces its trademark IQOS in its entirety, along with the descriptive geographic abbreviation “bg” representing Bulgaria, misleadingly attempting to indicate that the Website provided under the disputed domain name is the official store of its trademark for said country. It is therefore confusingly similar to its trademark regardless of the extension “.com”, which is of no importance in assessing confusing similarity for purposes of the Policy due to its consideration as a technical requirement.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it has not been authorized to use the IQOS trademark, and the disputed domain name is neither used in connection to any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. The Respondent’s behavior shows its intention to obtain a commercial gain, misleadingly diverting relevant consumers or tarnish its trademarks, not meeting the requirements set out by numerous previous panel decisions (the leading case being Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) for a bona fide offering of goods or services. The Respondent is not only promoting the Complainant’s products but also third party competing accessories, of other commercial origin. This fact prevents the finding of a bona fide offering of goods on behalf of the Respondent. Furthermore, a domain name cannot be “fair” if it suggests affiliation with the trademark owner, and the disputed domain suggests an affiliation with the Complainant and its IQOS trademark, as it reproduces this trademark in its entirety together with the abbreviation “bg” which is commonly used to indicate Bulgaria. The content of the Respondent’s Website further contributes to mislead users creating the appearance that it is the official IQOS online store for Bulgaria by using official marketing material and product images, including no information clarifying the Respondent’s relationship to the Complainant. All these circumstances fail to show any legitimate interest or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered in bad faith. Given the Respondent’s use immediately after registering the disputed domain name, offering the Complainant’s IQOS products, and the purely imaginative character of the term “iqos” with no inherent meaning, it is evident that the disputed domain name was registered in bad faith.
Furthermore, the Complainant asserts that the disputed domain name is being used in bad faith with the intention to attract, for commercial gain, Internet users/relevant consumers to the Respondent’s Website by creating a likelihood of confusion with its trademark IQOS as to the source, sponsorship, affiliation, or endorsement of its Website. The fact that the Respondent’s site does not provide any information on the identity of the provider clearly shows its intention to mislead Internet users/relevant consumers for commercial gain. Furthermore, the Respondent not only uses the disputed domain name to promote and commercialize IQOS branded products, but also competing products of other commercial origin. Such abusive use is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith.
The Complainant further contends that the fact that the Respondent is using a privacy protection service to hide its identity may in itself constitute a factor indicating bad faith, even if such privacy is based on the GDPR privacy mechanisms. Such conduct shows the intention to hide its identity in order to uphold and strengthen the false impression that the Complainant endorses its Website.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel of a sole panelist has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable Top-Level Domain (“TLD”) in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark IQOS.
The disputed domain name incorporates this mark in its entirety with an additional element “bg”, which may relate to the geographical term Bulgaria, the Complainant’s trademark being clearly recognizable in the disputed domain name, and the TLD “.com” shall be disregarded. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent is not authorized to use its trademark IQOS or incorporate it in the disputed domain name, and there is no evidence that the Respondent has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The evidence provided by the Complainant shows that the disputed domain name is linked to a Website which offers the Complainant’s IQOS products, together with competing products from different commercial sources, and does not inform about the absence of a relationship between the Parties.
This Panel considers that these facts prevent that the use of the disputed domain name may be considered legitimate under the Oki Data test, and effectively shifts the burden to the Respondent of producing relevant evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complaint.
The Panel also notes the inherent distinctive character of the trademark IQOS, not having any meaning in Bulgarian (language of the Respondent and its Website) or any other language, as well as the well-known character of the Complainant and the extensive presence of IQOS products over the Internet, as well as internationally, including Bulgaria (where the Respondent is located).
In addition, the Panel notes that the disputed domain name comprises the letters “bg”, often used as an abbreviation for Bulgaria, along with the trademark IQOS. As stated in section 2.5.1 of the WIPO Overview 3.0, “certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>) […] are seen as tending to suggest sponsorship or endorsement by the trademark owner.” See also section 2.8.2 of the WIPO Overview 3.0.
All these circumstances lead the Panel to consider it is highly probable the Respondent lacks legitimate interest in the disputed domain name. Further, the Respondent has not replied to the Complaint producing evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the IQOS trademark and did not have it in mind. Several factors in this case lead to this conclusion, namely i) the well-known character of the Complainant, ii) the extensive presence of IQOS products over the Internet and internationally, including Bulgaria (where the Respondent is located), iii) the inherent distinctive character of the IQOS trademark (not having any meaning in Bulgarian, language of the Respondent and its Website), and iv) its identical reproduction in the disputed domain name, adding the letters “bg” often used as an abbreviation for Bulgaria (location of the Respondent).
This conclusion is corroborated by the disputed domain name’s immediate use after its registration identifying an IQOS products’ online store, which contains the Complainant’s trademark in a prominent position (top left heading), and offers IQOS products as well as other competing products of different commercial origin.
Other cumulative circumstances of this case may indicate the Respondent is acting in bad faith, in particular
its absence of response not providing any evidence of actual or contemplated good faith use.
Furthermore, the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
All the above-mentioned and other relevant circumstances, in particular the use of official IQOS marketing material and photographs in the Respondent’s Website, the absence of any reference in this Website to its real owner, lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. In addition, the Panel notes that the nature of the disputed domain name (incorporating the Complainant’s mark plus an abbreviation of a geographic term) could cause confusion suggesting sponsorship, endorsement, affiliation or association with the Complainant and its trademark. This Panel considers highly probable it was registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, giving the impression of being the Complainant’s products’ official dealer, misleadingly attracting Internet users to the Respondent’s Website, and disrupting the Complainant’s business.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <bgiqos.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: 26 October 2018