WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Alona Savchenko

Case No. D2021-2162

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Alona Savchenko, Germany.

2. The Domain Name and Registrar

The disputed domain name <iqos-heets-germany.com> is registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, 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 July 7, 2021 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 July 7, 2021.

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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. A third party communication was received on July 14, 2021, by the Center. A request for suspension was received from the Complainant on July 16, 2021, and a Notification of Suspension was issued by the Center on July 19, 2021. A notice of Reinstitution of Proceeding was sent to the Parties on July 26, 2021, as requested by the Complainant. The Commencement of Panel Appointment Process was sent to the Parties on August 4, 2021.

The Center appointed James Bridgeman as the sole panelist in this matter on August 10, 2021. 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 manufacturer of tobacco and smoke-free products for which it uses the IQOS and HEETS trademarks and service marks and is the owner of the following International Trademark registrations:

- International trademark registration IQOS (word), registration number 1218246, registered on July 10, 2014, for services in classes 9, 11 and 34, designating a number of jurisdictions;

- International trademark registration IQOS (device), registration number 1338099, registered on November 22, 2016, for services in class 35;

- International trademark registration HEETS (word) registration number 1326410, registered on July 19, 2016, for services in classes 9, 11 and 34; and

- International trademark registration HEETS (word/device) registration number 1328679, registered on July 20, 2016, for goods and services in classes 9, 11 and 34.

The disputed domain name <iqos-heets-germany.com> was registered on June 22, 2021, and resolves to an online shop purporting to sell the Complainant’s IQOS branded products.

There is no information available about the Respondent except for that provided in the Complaint as amended, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Center for confirmation of the registration details of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims rights in the IQOS and HEETS trademarks established through its ownership of the above-described international trademark registrations and use of the marks in its electronic cigarettes business.

The Complainant alleges that the disputed domain name is confusingly similar to both its IQOS and HEETS trademarks as it contains both marks identically and, in their entirety, in addition to the geographical indication “germany” and the generic Top-Level Domain (“gTLD”) “.com”.

It is argued that the addition of a merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy. See Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923.

The Complainant adds that it is well established that the applicable gTLD extension in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11 and the cases referenced therein).

It is contended that in casu, any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS and HEETS trademarks.

The Complainant then alleges that the Respondent has no rights or legitimate interests in the disputed domain name, asserting that it has not licensed or otherwise permitted the Respondent to use the IQOS and HEETS marks, or any of its trademarks, or to register a domain name incorporating its trademarks.

The Complainant refers to screen-captures of the website to which the disputed domain name resolves, provided in an annex to the Complaint, which show that the Respondent’s website, primarily in the German language, purports to offer the Complainant’s IQOS branded produces for sale.

The Complainant draws this Panel’s attention to the banner on the exhibited website which prominently displays the name “IQOS STORE GERMANY”, and provides an address at in Germany and argues that the Respondent’s website is clearly directed to the market in Germany, implying that it is an official online retailer of the Complainant’s IQOS System in Germany. The Respondent argues that such use does not constitute a legitimate noncommercial or fair use of the disputed domain name, but on the contrary, the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant.

In this regard, the Complainant firstly asserts that the Respondent is not an authorized distributor or reseller of the IQOS System, and secondly argues that use of the disputed domain name in this manner does not meet the requirements set out by numerous UDRP panel decisions to constitute a bona fide offering of goods for the purposes of the Policy.

In support of its submissions, the Complainant refers to the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which it submits the UDRP panel concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:

1. the Respondent must actually be offering the goods or services at issue;

2. the Respondent must use the site to sell only the trademarked goods;

3. the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and

4. the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Complainant adds that it is a common principle in all cases regarding the Oki Data scenario that the use of a domain name cannot be “fair” if it suggests an affiliation with the trademark owner (see AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416 and the decisions provided therein).

In the present case, the Complainant argues that the disputed domain name, in itself, suggests at least an affiliation with the Complainant and its IQOS and HEETS trademarks, as the disputed domain name wholly reproduces the Complainant’s registered IQOS and HEETS trademarks together with the geographical indication “germany”.

Furthermore, the owner / administrator of the website to which the disputed domain name resolves, prominently and without authorization presents the Complainant’s registered IQOS trademark in the banner on the top of the landing page, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider.

The Complainant also contends that the Respondent’s website also displays the Complainant’s official product images without authorization and includes no information regarding the identity of the Respondent, which is only identified as “IQOS Store Germany” which in itself perpetuates the false impression of an official commercial relationship between the website and the Complainant.

The Complainant adds that its IQOS System is primarily distributed through officially endorsed stores, and so the Respondent’s use of the disputed domain name must confuse Internet users leading them to falsely believe the website to which the disputed domain name resolves is an official, endorsed distributor of the Complainant’s goods. The Complainant contends that such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent.

Therefore, the second element of the UDRP is met.

The Complainant then alleges that the disputed domain name was registered and is being used in bad faith, arguing that it is evident from the Respondent’s use of the disputed domain name, that the registrant knew of the Complainant’s IQOS and HEETS trademarks when registering the disputed domain name.

The Complainant adds that the terms IQOS and HEETS are purely imaginative terms and unique to the Complainant and are not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence to suggest that a registrant might have chosen the disputed domain name, without the intention of invoking a misleading association with the Complainant.

The Complainant adds that by reproducing its registered trademarks in the disputed domain name and in the banner title of the website to which it resolves, the Respondent clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. The Complainant adds that this suggestion is further supported by the Respondent’s use of the Complainant’s official product images.

In conclusion, the Complainant submits that the Respondent registered and is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered IQOS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that such actions on the part of the Respondent constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

No Response was filed by the Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 has adduced uncontested convincing evidence that it has rights in the IQOS and HEETS trademarks and service marks thought its ownership of the portfolio of international trademark registrations to which it refers.

The disputed domain name consists of the Complainant’s IQOS and HEETS trademarks in combination with two hyphens, the geographical designation “germany”, and the gTLD “.com”.

The trademarks IQOS and HEETS are the prominent and dominant elements of the disputed domain name. Noting the Complainant’s trademarks are recognizable within the disputed domain name, the addition of two hyphens and the geographical designation “germany” does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).

For the purposes of evaluating confusing similarity the gTLD “.com” may be ignored in the circumstances of this Complaint because as a gTLD it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in this context (see WIPO Overview 3.0, section 1.11).

This Panel finds therefore that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights and the Complainant has succeeded in the first element of the test in Policy 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has made out an uncontested prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name arguing that:

- the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS and HEETS trademarks;

- both the IQOS and HEETS marks are distinctive coined words;

- the website to which the disputed domain name resolves, as evidenced in the Complaint, purports to offer the Complainant’s IQOS branded produces for sale;

- the use of the disputed domain name to resolve to the website appearing to be related to the Complainant, as well as the use of the Complainant’s IQOS word mark in the banner and name of said website without consent, cannot constitute a legitimate noncommercial or fair use of the disputed domain name, but on the contrary, the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant; and,

- the Respondent presents itself as an authorized distributor or reseller of the Complainant’s IQOS electronic, cigarette system which it is not.

This Panel accepts the Complainant’s submissions that in order to prove fair use of a trademark as a reseller of a trademark owners goods a respondent must meet certain tests as set out in the Oki Data case; these tests include that the respondent must actually be offering the goods or services at issue; that the respondent must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant’s relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. In casu, Respondent and the website to which the disputed domain name resolves does not satisfy that test.

It is well established that if the Complainant makes out a prima facie case, the burden of production shifts to the Respondent to prove his rights or legitimate interests in the disputed domain name. The Respondent has failed to file any response to the Complaint or provide any defence to the Complainant’s allegations and so has not discharged the burden.

In the circumstances, this Panel must find that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded in the second element of the test in Policy 4(a)(ii).

C. Registered and Used in Bad Faith

Because the trademarks IQOS and HEETS are each distinctive, coined words with no meaning other than as the Complainant’s trademarks and service marks, and the fact that both of these distinctive marks are included in the disputed domain name, and in fact they are each separated and emphasised by a hyphen, it is implausible that the disputed domain name was registered for any reason other than to create a reference to the Complainant’s marks.

As the Respondent has no rights, legitimate interest, or authority to use either of these marks, this Panel must find that the disputed domain name was registered in bad faith with the Complainant’s marks in mind in order to take predatory advantage of the Complainant’s marks and goodwill.

The evidence, in the form of screen captures of the website to which the disputed domain name resolves show that the Respondent is purporting to offer the Complainant’s branded goods for sale to the general public and in particular the German speaking public. In doing so, the Respondent fails to distinguish itself or its website from the Complainant but instead by using the IQOS and HEETS marks in the disputed domain name itself, in the address of the website to which the disputed domain name resolves, and in the content on said website, creates a false impression of association with the Complainant. This Panel accepts that the Respondent is using the disputed domain name in bad faith, in order to divert Internet traffic intended for the Complainant. The Respondent is using the Complainant’s trademarks in the disputed domain name in this manner, and diverting Internet traffic in bad faith in order to confuse Internet users.

As this Panel has found that the disputed domain name was registered and is being used in bad faith, the Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to the remedy requested.

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 <iqos-heets-germany.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: August 18, 2021