WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Altynay, Smagulova Altynay and Maxat Batyrbekov

Case No. D2019-0712

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondents are Altynay, Smagulova Altynay of Almaty, Kazakhstan and Maxat Batyrbekov of Almaty, Kazakhstan.

2. The Domain Names and Registrars

The disputed domain name <ioosgold.com> is registered with Registrar of Domain Names REG.RU LLC
and <iqosgold.com> (jointly the “Disputed Domain Names”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2019. On April 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 2, 2019 and April 3, 2019, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details for the Disputed Domain Names. On April 4, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On the same date the Complainant requested English to be the language of the proceedings. The Respondents did not reply on the language of the proceedings.

The Center verified that 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 in both English and Russian, and the proceedings commenced on April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on May 8, 2019.

The Center appointed Mariya Koval as the sole panelist in this matter on May 13, 2019. 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 part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to “PMI”). PMI is a leading international tobacco company, operating on more than 180 markets. Moreover, PMI operates 46 production facilities in 32 countries.

PMI is known for innovating across its brand portfolio. One of the Reduced Risk Products, developed by PMI, is branded Iqos (the “Iqos Products”), which is a precisely controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. PMI launched its innovative product under the IQOS Trademark (the “IQOS Trademark”) in 2014. Today the Iqos Products are available in around 43 markets across the world. Due to an investment in excess of USD 5 billion and extensive international sales and marketing efforts, the Iqos Products and the IQOS Trademark have achieved an international success and reputation, and at present around 6.6 million customers use the Iqos Products worldwide.

The Complainant owns a large portfolio of IQOS Trademark registrations around the world, including the Russian Federation and Kazakhstan, in particular, but not limited to:

- International Registration IQOS No. 1218246, registered on July 10, 2014, designating, among others, Kazakhstan;

- Russian Federation Trademark IQOS No. 556749, registered on November 9, 2015;

- Kazakhstani Trademark IQOS No. 61697, registered on October 19, 2018.

The Complainant operates a number of domain names containing its IQOS Trademark for promotion of its goods, among which are <iqos.com>, <iqos.kz>, <iqos.ru>, <iqos.us> and many others.

According to the current record, the Disputed Domain Name <iqosgold.com> was registered on June 25, 2018 and the Disputed Domain Name <ioosgold.com> – on December 13, 2018.

At the date of this decision, the websites under the Disputed Domain Names are inactive. According to the evidence of the Complainant, the Disputed Domain Name <iqosgold.com> was forwarded to the Disputed Domain Name <ioosgold.com>. The latter was linked to an online shop at a website “www.ioosgold.com”, on which the smoking devices competing with the Complainant’s Iqos Products were offered. The website also further refers to another website under the domain name <ioosgold.kz>. The website was provided in Russian, Turkish, English and Japanese languages indicating that the website is dedicated to international public.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name <iqosgold.com> identically adopts the Complainant’s IQOS Trademark. The Disputed Domain Name <ioosgold.com> comprises the term “ioos”, which is confusingly similar to the Complainant’s IQOS Trademark. The Disputed Domain Name <ioosgold.com> may also serve to divert traffic away from the Complainant, as the result of a misspelling of the Complainant’s IQOS Trademark.

The Complainant further contends that the content of the website to which the Disputed Domain Names resolved, the infringing branding of the “Ioos” products offered on the website and the history of the Respondents’ infringing use of the Complainant’s IQOS Trademark clearly show that the Respondents have been targeting the Complainant’s Trademark.

The Complainant also alleges that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names in view of the following:

- the Complainant has not licensed or otherwise permitted the Respondents to use any of its Trademarks or to register the Disputed Domain Name incorporating its IQOS Trademark or the confusingly similar term “ioos”;

- the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Names. On the contrary, the Respondents’ behavior shows a clear intent to obtain a commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s Trademark;

- the Respondents are not promoting the Complainant’s products but competing products clearly infringing the Complainant’s IQOS Trademark by using the confusingly similar brand “Ioos”, that clearly prevents the finding of a bona fide offering of goods on behalf of the Respondents;

The Complainant asserts that it is evident from the Respondents’ use of the Disputed Domain Names that the Respondents were very well aware of the Complainant’s IQOS Trademark when registering the Disputed Domain Names. The Respondents initially started offering the infringing “Ioos” products as Iqos Gold products and only changed the brand to “Ioos” Gold.

The Complainant further contends that the Respondents’ use of the Disputed Domain Names clearly evidence that the Respondents registered and used the Disputed Domain Names with the intention to attract, for commercial gain, Internet users / relevant consumers to the website by creating a likelihood of confusion with the Complainant’s IQOS Trademark as to the source, sponsorship, affiliation, or endorsement of its Website or location, which constitutes registration and use in bad faith.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of multiple Respondents

The Complainants has requested consolidation of the two Respondents in this matter.

The Complainant claims that the Disputed Domain Names are under common control by the Respondents as, inter alia, the Disputed Domain Name <iqosgold.com> is forwarded to the website provided on <ioosgold.com>. Furthermore, both registrants share the same address, as well as the use and prior use of the Disputed Domain Names, shows that the Disputed Domain Names in fact are under common control.

The consensus view of UDRP panels is expressed in 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”. The Panel is satisfied that the Complainants submitted convincing and adequate evidence showing that the Disputed Domain Names are under common control. As a result thereof consolidation of the Respondents is fair and equitable in absence of arguments from the Respondents. The Panel therefore allows the consolidation of the Respondents.

According to the paragraph 4(a) of the Policy, a complainant must prove that the respondent has registered a domain name which is:

(i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements to succeed.

B. Language of the proceedings

The language of the Registration Agreement for the Disputed Domain Name <ioosgold.com> is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondents are able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted in its Complaint that the language of the proceedings be English.

The Panel further notes that no objection was made by the Respondents to the proceedings being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement for the Disputed Domain Name <ioosgold.com>. This was despite the Center notifying the Respondents in Russian and English that the Respondents are invited to present their objection to the proceedings being held in English and if the Center did not hear from the Respondents by a certain date, the Center would proceed on the basis that the Respondents had no objection to the Complainant’s request that English be the language of the proceedings. The Respondents had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

C. Identical or Confusingly Similar

The Complainant has established rights in its IQOS Trademark in view of large number of registrations around the globe, including Kazakhstan.

The Disputed Domain Name <iqosgold.com> contains the Complainant’s IQOS Trademark in its entirety, with addition of a descriptive term “gold”, and the generic Top-Level Domain (“gTLD”) “.com”. As stated in WIPO Overview 3.0, section 1.7 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 UDRP standing. Addition of the term “gold” to the Complainant’s Trademark does nothing for distinguishing the IQOS Trademark.

The Disputed Domain Name <ioosgold.com> resembles the Complainant’s IQOS Trademark, however the second letter “q” has been changed to the letter “o”. The Disputed Domain Name is a plain example of “typosquatting” when the spelling of a trademark has been minimally changed by the substitution of one letter. The consumers may obviously fail to notice such “typosquatting”. According to the WIPO Overview 3.0, section 1.9, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is normally considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel finds that replacement of one letter in this case is insufficient to distinguish the Disputed Domain Name from the Complainant’s Trademark. Taking into consideration the fact that the website under the Disputed Domain Name <iqosgold.com> was forwarded to the website under the Disputed Domain Name <ioosgold.com>, addition of the term “gold” does not influence the confusingly similar impression to the Complainant’s Trademark.

The gTLD “.com” is generally disregarded for the purposes of assessing confusing similarity under the Policy.

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the IQOS Trademark in which the Complainant has rights. Accordingly, the Complainant has satisfied the first element in paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

The Complainant argues that the Respondents have no rights or legitimate interest in respect of the Disputed Domain Names in view of the Complainant has not licensed or otherwise permitted the Respondents to use its IQOS Trademark or to register any domain name incorporating its Trademark.

In accordance with the WIPO Overview 3.0, section 2.1, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names that has not been in any way rebutted by the Respondent.

The Panel is of opinion that the Respondents are not making a legitimate non-commercial or fair use of the Disputed Domain Names. On the contrary, the registration and use of the Disputed Domain Names for redirecting Internet users to the competing website obviously cannot constitute neither bona fide offering goods nor a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert the Complainant’s consumers. Currently no active websites resolve from the Disputed Domain Names. Moreover, the website under the Disputed Domain Name <ioosgold.com> did not disclose any information about the relationship between the Complainant and the Respondents.

According to the WIPO Overview 3.0, section 2.8.1 panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Panel finds that the Respondents do not match any of principle of the “Oki Data test”.

The Respondents’ use of the Complainant’s IQOS Trademark on the website under the Disputed Domain Name <ioosgold.com> (and also on the connected website “www.ioosgold.kz”) together with offering of the competing products, does not leave any doubts that the Respondents were well aware of the IQOS Trademark and innovative products under it when registering the confusingly similar Disputed Domain Names.

The Disputed Domain Name and, in the Panel’s opinion, only enhances the likelihood of confusion by the consumers in view of the Complainant offers its new generation Iqos Products also in gold color (IQOS 3).

In view of the foregoing, the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and that the Complainant fulfils the second condition of paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, 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 on line 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 Disputed Domain Name <iqosgold.com> incorporates the Complainant’s Trademark in whole and the Disputed Domain Name <ioosgold.com> consitutes “typosquatting” of the Complainant’s Trademark, both with addition of the term “gold”, which corresponds to the color in which the new generation of IQOS Products are on sale by the Complainant, create a strong likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Names.

The Panel finds that, taking into consideration all circumstances of this case, the Disputed Domain Names more than likely appears to have been registered and used in bad faith, with well awareness of the Complainant’s IQOS Trademark and with the only intention to benefit from the ownership of the Disputed Domain Names, that was likely to confuse the Internet users into thinking they were related to the Complainant.

As noted above, the Disputed Domain Names have been used to sale and promote competing goods to those offered by the Complainant, including by use of the Complainant’s IQOS Trademark. Taking into account the sale and promotion of competing goods in combination with the Respondents’ use of the confusingly similar Disputed Domain Names, the Panel finds that the Respondents intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s Trademark.

According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel considers it is obvious that the Respondents, having registered and used the Disputed Domain Names, which are confusingly similar to the Complainant’s Trademark, and also having offered the competing products, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondents did not file any rebutment, the Panel concludes the Respondents have registered and are being used the Disputed Domain Names in bad faith.

Furthermore, the Respondents did not respond to the Complainant’s contentions and did not participate in this proceeding. Previous UDRP panels have considered that the Respondent’s failure to respond to the Complaint supports an inference of bad faith, see e.g. Bayerische Motoren Werke AG v. Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

In light of the above, the Panel concludes that the third element has been established by the Complainant with respect to the Disputed Domain Names.

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 Names <ioosgold.com> and <iqosgold.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: May 24, 2019