WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Aleksei Ivonin, Private Person

Case No. D2019-1022

1. The Parties

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

The Respondent is Aleksei Ivonin, Private Person, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <top-iqos.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 May 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 12, 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 part of the Philip Morris International group (“PMI”), an international tobacco company with products sold in about 180 countries. One of the products of PMI is called IQOS. It is a heating device into which specially designed tobacco products sold by the Complainant under the brands “HEETS” and “HeatSticks” are inserted and heated to generate a nicotine-containing aerosol. PMI has invested USD 6 billion in the development and marketing of the IQOS product. It was first launched by PMI in Japan in 2014 and now has a 17.3 per cent share of the market there. The IQOS product is available in around 44 markets across the world, and has about 7.3 million consumers worldwide. The IQOS product is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant is the owner of the following trademark registrations for the brand IQOS (the “IQOS trademark”):

- the trademark IQOS with registration No. 556749, registered in the Russian Federation on November 9, 2015 for goods in International Classes 9, 11 and 34;

- the trademark IQOS with registration No. 686934, registered in the Russian Federation on December 10, 2018 for goods and services in International Classes 9, 12, 14, 16, 18, 21, 25, 34, 35, 37, 41 and 43;

- the International trademark IQOS with registration No. 1338099, registered on November 22, 2016 in multiple jurisdictions, including the Russian Federation, for services in International Class 35; and

- the International trademark IQOS with registration No. 1329691, registered on August 10, 2016 for multiple jurisdictions, including the Russian Federation, for goods in International Classes 9, 11 and 34.

The disputed domain name was registered on April 11, 2019. It is linked to a Russian language online shop under the name “IQOS-SHOP – Интернет магазин IQOS устройств”, which name can be translated in English as “IQOS-SHOP – Internet shop for IQOS devices”. The website displays the IQOS trademark and offers IQOS product alongside similar products of other manufacturers. All prices are indicated in Russian Rubles and the website offers delivery in all locations in the Russian Federation. It contains a copyright message at the bottom with the text “2019 © Все права защищены. Top-IQOS Интернет магазин”, which can be translated in English as “2019 © All rights reserved. Top-IQOS Internet shop”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the IQOS trademark, as it incorporates this trademark with the addition of the non-distinctive word “top”, which is insufficient to avoid a finding of confusing similarity. According to the Complainant, Internet users visiting the website associated to the disputed domain name would expect to find a website commercially linked to the owner of the IQOS trademark, and this association is exacerbated by the unauthorized use on the Respondent’s website of the Complainant’s official product images and marketing materials and the lack of information about the entity that actually offers the sale of the products featured on the website.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not permitted the Respondent to use the IQOS trademark or to register a domain name incorporating it, and the Respondent is not an authorized distributor or reseller of IQOS products. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but attempts to unfairly obtain commercial gain by misleadingly diverting consumers to its website and falsely suggesting an affiliation with the Complainant. The disputed domain name reproduces the Complainant’s IQOS trademark together with the non-distinctive and descriptive word “top”, and the Respondent’s website prominently features the Complainant’s IQOS logo and uses the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in these materials. The Respondent’s website includes no information regarding the identity of the supplier of the offered products and offers competing tobacco products and accessories of other commercial origin alongside the Complainant’s products. As the Complainant’s IQOS products are primarily distributed through official stores, Internet users would be misled about the relationship between the Respondent’s website and the Complainant and would have a false impression that the Respondent’s website is endorsed by the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent’s use of the disputed domain name shows that when registering the disputed domain name, the Respondent knew of the IQOS trademark which is imaginative and unique to the Complainant. The Respondent started offering the Complainant’s IQOS products alongside competing products of other commercial origin immediately after registering the disputed domain name. According to the Complainant, the Respondent chose the disputed domain name with the intention of invoking a misleading association with the Complainant since the Respondent has reproduced the Complainant’s IQOS trademark in the disputed domain name and the title of its website, which misleadingly suggests the Complainant or an affiliated dealer as the source of this website. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images and marketing materials. According to the Complainant, the above shows that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the IQOS trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) portion of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD portion of the disputed domain name.

The relevant part of the disputed domain name is therefore the second-level domain portion “top-iqos”. It consists of the elements “top” and “iqos”. The “iqos” element which dominates in this sequence is identical to the IQOS trademark, while the “top” element is a descriptive word with no distinctiveness. The combination of the two elements may indeed suggest to Internet users that the disputed domain name refer to an online location where the Complainant’s IQOS products are offered for sale.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the IQOS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the IQOS trademark or to distribute the IQOS products, and that the Respondent is not commonly known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for a website that offers the Complainant’s IQOS products for sale alongside competing products, displays the Complainant’s IQOS trademark and marketing materials and claims copyright in the website without authorization by the Complainant and without disclosing the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name is confusingly similar to the IQOS trademark and as discussed above in section 6.A, Internet users may regard it as referring to a location where the Complainant’s IQOS products are offered for sale. The disputed domain name resolves to a website that offers the Complainant’s IQOS products and competing products of other manufacturers, displays the IQOS trademark and marketing materials and claims the copyright in these materials without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. As summarized in section 2.8.1 of WIPO Overview 3.0, panels under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, but only if they comply with certain cumulative requirements, among which are the requirements that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder and must offer only the goods of trademark holder. These two requirements have not been complied with in the present case.

In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s IQOS trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website which offers the Complainant’s products and competing products without disclosing the lack of relationship between the Parties and without authorization of this conduct by the Complainant. To the Panel, such conduct does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name fully incorporates the IQOS trademark in combination with the element “top” which is not distinctive. The Respondent does not deny that it is linked it to a website that offers the Complainant’s IQOS products alongside competing products and displays the IQOS trademark and marketing materials without disclosing the lack of relationship between the Parties, and that this has been done with authorization from the Complainant. The IQOS trademark has been registered in the Russian Federation where the Respondent is located for several years prior to the registration of the disputed domain name.

Taking the above into account, the Panel accepts that as more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the IQOS trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location where the Complainant’s IQOS products are offered for sale, and has used the disputed domain name to offer the Complainant’s products and products of the Complainant’s competitors for commercial gain. This satisfies the Panel that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <top-iqos.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 21, 2019