WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Aleksandr Mironyuk
Case No. D2018-2431
1. The Parties
Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Aleksandr Mironyuk of London, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <iqoscigaretteltd.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 5, 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 Respondent of the Complaint, and the proceedings commenced on November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on December 10, 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
According to the Complaint, Complainant belongs to the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group owns, inter alia, the MARLBORO brand, the world’s highest selling cigarette brand since 1972. PMI group operates 46 production facilities in 32 countries. PMI group has been transforming its business from combustible cigarettes to other smoking products, one of which, developed and sold by PMI group, is a tobacco heating system branded as IQOS. The IQOS system consists of three components, the IQOS holder, the heated tobacco units sold under the names “HEETS” and “HeatSticks”, which are inserted into the IQOS holder, and an IQOS Pocket Charger, used to charge the IQOS Holder (together “the IQOS Products”). The IQOS Products were first launched by PMI group in 2014. Today the IQOS Products are available in approximately 43 markets across the world. Per Complainant, PMI group has invested USD 4.5 billion to market the IQOS Products and as a result the IQOS brand has gained considerable international reputation, with almost 6 million users. Per Complaint, the IQOS Products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers.
Complainant is the owner of numerous IQOS trademark registrations. These include:
- United States trademark registration No. 4763090 (word mark), filed on May 2, 2014, registered on June 30, 2015, for goods in international classes 9, 11, and 34;
- International registration No. 1218246 (word mark), registered on July 10, 2014 designating, inter alia, European Union, Belarus, Kazakhstan, and Ukraine, for goods in international classes 9, 11, and 34; and
- International registration no. 1329691 (word and device mark), registered on August 10, 2016, designating, inter alia, European Union, Russian Federation, Belarus, and Ukraine, for goods in international classes 9, 11, and 34.
The Domain Name was registered on September 23, 2018 and resolves to a website (the “Website”) allegedly operated by a company under the name Iqos Cigarette Ltd., a company unknown and non-affiliated to Complainant. The Website is used to promote a purported investment scheme offered by the same company Iqos Cigarette Ltd. The Website presents the Domain Name on the top left, where users expect to find the name of the website or of the website provider accompanied by a representation of one of Complainant’s IQOS devices. Below the Header the landing page states: “Welcome to IQOSCIGARETTELTD.COM” against an image of Complainant’s IQOS devices while the IQOS trademark is highlighted in orange. In the “About us” section of the Website it is stated that Iqos Cigarette Ltd. is “the company that imports the tobacco heating devices developed by Philip Morris International brand to CIS countries”, that “the company has decided to create an investment platform and accelerate the growth of capital” and that “the company purchases a large number of the tobacco heating devices at wholesale prices and then, sells them to distributors in big cities of the Russian Federation, Ukraine, the Republic of Belarus, Kazakhstan, and other countries. June 6, 2017 the company was officially registered at the territory of United Kingdom. September 23, 2018 the company launched its investment platform”.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the IQOS mark.
The Panel finds that the Domain Name <iqoscigaretteltd.com> is confusingly similar with the IQOS trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “cigarette” which is added in the Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The letters “ltd” which are added in the Domain Name do not avoid a finding of confusing similarity either, as they are an abbreviation of the company type “private limited company”, hence non-distinctive term.
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name <iqoscigaretteltd.com> is confusingly similar to the IQOS trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, 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 you [Respondent] 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 [Respondent] (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 [Respondent] 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name resolves to a website containing text and content that suggests falsely that the website is related to Complainant and that it is operated by an exclusive distributor of Complainant, while giving also the false impression that the Website and the investment options presented thereon are provided/endorsed by Complainant or a company affiliated to Complainant. The use of the Domain Name for such impersonation or fraud cannot confer rights or legitimate interests on Respondent (L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285). Furthermore, this also indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s IQOS trademark is well known for smoking devices. Furthermore, IQOS is a fictitious word. Because the IQOS mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional term “cigarette”, that corresponds to the business and products offered by Complainant’s group, and the non-distinctive company type “ltd”. Therefore, use of the words “cigarette” and “ltd” creates a likelihood of confusion with Complainant’s mark and business.
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, that through its content and text gives the false impression that it is operated by Complainant or a company affiliated to Complainant and promotes an investment scheme falsely appearing to be endorsed by Complainant or a company affiliated thereto. The Domain Name operates by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034 and WIPO Overview 3.0, sections 3.3 and 3.4).
The Panel considers the following factors: (i) the reputation of Complainant’s marks, (ii) the failure of Respondent to submit a response, and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the Domain Name resolves to a website which provides the false impression that the website and the investment platform promoted thereon are related to or endorsed by Complainant.
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <iqoscigaretteltd.com> be transferred to Complainant.
Date: December 24, 2018