WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Pietro and friends Admin, myhairstyle3in1
Case No. D2020-0558
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Pietro and friends Admin, myhairstyle3in1, Italy.
2. The Domain Name and Registrar
The disputed domain name <protectyouriqos.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, 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 March 11, 2020 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 amended Complaint on March 12, 2020.
The Center verified that the Complaint together with the amended 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2020.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on May 1, 2020. 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, a company registered in Switzerland, is a subsidiary of Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in approximately 180 countries, notably Marlboro cigarettes, a leading cigarette brand. PMI has developed smoke-free products, such as IQOS, which is a system where a nicotine-containing product is heated in a device and inhaled as an aerosol. The IQOS system was first launched in 2014 in Japan, is currently available in around 52 countries, and has approximately 9.5 million consumers worldwide. It is almost exclusively distributed through official IQOS stores, websites and selected authorized distributors and retailers.
The disputed domain name was initially registered in the name of a proxy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name.
The Complainant owns several trademarks containing the term IQOS, including International Registration No. 1218246 registered on July 10, 2014, and International Registration No. 1338099 registered on November 22, 2016 (together referred to hereinafter as: “the Mark”).
The disputed domain name <protectyouriqos.com> was created on November 11, 2019.
The Complainant has submitted evidence that when active, the Respondent’s website, to which the disputed domain name was redirecting, offered for sale fashion accessories for IQOS devices, allegedly designed in Italy. At the time of the Decision, the disputed domain name resolves to a website with the message “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: protectyouriqos.com.”
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <protectyouriqos.com>, contains the distinctive element “iqos” in its entirety, and that the addition of the descriptive element “protectyour” is not capable of dispelling the confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Aspects - Failure to respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <protectyouriqos.com>, it is evident that the latter consists of the Mark, preceded by the words “protect” and “your” and followed by the generic Top-Level Domain (“gTLD”) “.com”.
The addition of such non-distinctive and descriptive words does not prevent a finding of confusing similarity.
It is also well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <protectyouriqos.com> is confusingly similar to the Mark, which is incorporated in its entirety, and that the addition of the “protectyour” element in the disputed domain name does not dispel the confusing similarity.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name. The way the Respondent has used the disputed domain name is not bona fide (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name redirects the public to the Respondent’s website where the Mark is prominently displayed, showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Mark.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name. The Respondent’s website does not acknowledge the Complainant as the real owner of the Mark.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant and (ii) received no authorization from the Complainant to register or use the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the disputed domain name redirected to the Respondent’s website where the Mark is prominently displayed, the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Furthermore, considering the Respondent’s use of the disputed domain name, the Panel concludes that the Respondent knew of the Mark when the Respondent registered the disputed domain name, and that such registration was made in bad faith.
The Panel notes that although the Respondent used a proxy service, the Respondent’s address in Italy was duly mentioned on the website to which the disputed domain name redirected, which could have allowed the Complainant to contact the Respondent. Under the circumstances, the use of a proxy service by the Respondent is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004).
Nevertheless, by reproducing the Mark in the disputed domain name and on the pages of the website to which the disputed domain name redirected, the Respondent suggested that it is an official online retailer of the Complainant. This impression is reinforced by the Respondent’s use on the website pages of a number of the Complainant’s official product images.
The Panel finds that the Respondent has attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and that such use is constitutive of bad faith.
Finally, previous UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. The Panel finds that there cannot be any doubt that the Respondent had such an affirmative duty, given the more than 190 decisions involving the Mark rendered by prior UDRP panels, readily available online through the search engine of the Center’s website.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <protectyouriqos.com> be transferred to the Complainant.
Date: May 12, 2020