WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Ernest Simsaryanov
Case No. D2021-3952
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“U.S.”) / Ernest Simsaryanov, U.S.
2. The Domain Names and Registrar
The disputed domain names <heatsticksla.com> and <iqosla.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on December 2, 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 December 3, 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 December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on January 12, 2022. 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 Philip Morris Products S.A., a company which is part of the group Philip Morris International Inc. The Complainant is a leading international tobacco company which sells its products in approximately 180 countries.
The Complainant has registered the trademarks IQOS, HEETS, and HEATSTICKS in several countries, among others:
- U.S. Registration HEATSTICKS (word) No. 4,758,618 registered on June 23, 2015 for goods in class 34;
- U.S. Registration IQOS (word) No. 4,763,090 registered on June 30, 2015 for goods and services in classes 9, 11 and 34;
- U.S. Registration IQOS (device) No. 4,763,088, registered on June 30, 2015 for goods and services in classes 9, 11 and 34;
- U.S. Registration HEETS (word) No. 5,860,364, registered on September 17, 2019 for goods in class 34 ;
- U.S. Registration HEETS (word/device) No. 5,238,861, registered on June 30, 2015 for goods and services in classes 9, 11 and 34; and
- International Registration IQOS (device) No. 1338099 registered on November 22, 2016 for services in class 35, designating Albania, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, China, Colombia, Algeria, Egypt, European Union, Georgia, Israel, India, Iceland, Japan, Republic of Korea, Kazakhstan, Morocco, Monaco, Montenegro, Mexico, Norway, New Zealand, Sultanate of Oman, Philippines, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America.
The disputed domain names were registered as follows: <iqosla.com> on August 28, 2021, and <heatsticksla.com> on February 3, 2021.
According to the evidence included in the Complaint, the disputed domain names resolved to websites that appeared to offer for sale the Complainant’s products.
5. Parties’ Contentions
The Complainant’s parent company is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”, which Philip Morris International Inc. defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking), Philip Morris International Inc. has developed a number of RRP products. One of these RRPs developed and sold by Philip Morris International Inc. is called IQOS.
The Respondent is not known or in any way related to the Complainant and is not authorized to use the IQOS and HEATSTICKS trademarks.
The Complainant has made a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name. 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 HEATSTICKS trademarks.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s conduct 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.
The Respondent is not an authorized distributor, reseller or repair services operator of the IQOS and HEATSTICKS trademarks.
In the websites to which the disputed domain names resolve, prominently and without authorization presents the Complainant’s IQOS, HEETS, and HEATSTICKS registered trademarks. The website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material.
The terms “iqos” and “heatsticks” are not commonly used to refer to tobacco products or electronic devices. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant.
The Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS and HEATSTICKS 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, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In this regard, we may refer to the above explanations.
By reproducing the Complainant’s registered trademarks IQOS and HEATSTICKS and associated images and content in the websites associated to the disputed domain names, the Respondent’s websites clearly suggests the Complainant or an affiliated to the Complainant as the source of the websites, which it is not.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents
Although paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules, neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents per se in a single administrative proceeding. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. Also a number of panels have concluded that the Policy and Rules do not preclude multiple complainants in appropriate circumstances from jointly seeking relief in a single administrative proceeding.
The consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. As noted above, indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.
The Panel finds that the Complainant has established more likely than not that the disputed domain names are subject to the common ownership or control of the Respondent. The Panel finds such common control sufficient to justify consolidation of the Complainant's claims against the Respondent in this proceeding. Thus, the Panel concludes in the specific circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. Both disputed domain names appear to be the subject of common control based on the following facts:
(i) The disputed domain names are themselves similar in composition through their incorporation of a trademark belonging to the Complainant, together with the geographical abbreviation for Los Angeles, i.e., the suffix “la”;
(ii) the Registrar for the disputed domain names is the same (i.e., GoDaddy.com, LLC);
(iii) each of the respective websites associated with the disputed domain names are structured in a similar, minimalistic manner and contain similar content;
(iv) each of the respective websites associated with the disputed domain names make use of identical images of the Complainant’s products;
(v) the disclosed registrant for both disputed domain name is nominally identical and uses the same physical address, albeit a different email address.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to each of the disputes domain names:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel holds that the disputed domain names are confusingly similar to the Complainant’s trademarks IQOS and HEATSTICKS. The Respondent’s incorporation of the Complainant’s trademarks in full in the disputed domain names is evidence that the disputed domain names are confusingly similar to the Complainant’s trademarks. Mere addition as a suffix of the expression “la” in both disputed domain names, which usually is associated with the acronym of city of Los Angeles in the U.S., does not prevent a finding of confusing similarity with the Complainant’s marks.
Further, the addition of the generic Top-Level Domain “.com” to the disputed domain names does not prevent a finding of confusing similarity for purposes of the Policy.
The Panel is satisfied that the disputed domain names are confusingly similar to the Complainant’s trademarks and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by relevant evidence from the Respondent will lead to this ground being set forth.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names.
The Panel finds that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain names or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Furthermore, the unrebutted claim of the Complainant that the disputed domain names are being used for deliberately attracting Internet users to the Respondent’s websites as well as displaying the Complainant’s trademarks, Complainant’s copyrighted images and content in the mistaken belief that it was the websites of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain names. Furthermore, the websites are devoid of any disclaimer as to their relationship, or lack thereof, to the Complainant. Accordingly, the misdirection caused by the incorporation of the Complainant’s trademarks in their entirety in the disputed domain name is further exacerbated by the content of the disputed domain name, displaying and marketing the Complainant’s trademarked goods without disclaimer.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain names in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademarks prior to registering the disputed domain names. In this case, the widespread commercial recognition of the trademarks IQOS, HEETS, and HEATSTICKS such that the Respondent must have had knowledge of the trademarks before registering the disputed domain names. The Respondent appears to have chosen the disputed domain names in order to deliberately attract Internet users to the websites associated to the disputed domain names misleading them to believe that it is the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is reinforced by the content, images, and trademarks of the Respondent’s websites whereby the Complainant’s trademarks and content are included. In this Panel’s view, bad faith is suggested also by the inclusion of the expression “la” as a suffix in both disputed domain names, seeing as the Complainant operates in the Unites States of America and markets its trademarked products therein. As such, the Panel is satisfied that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.
Thus, the Panel finds that each of the disputed domain Names has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 names, <heatsticksla.com> and <iqosla.com>, be transferred to the Complainant.
Date: January 24, 2022