WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Galati Ivesti, Serbia srl / Gold Hands, IQOSSHOP.NET

Case No. D2020-1219

1. The Parties

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

The Respondent is Galati Ivesti, Serbia srl, Serbia / Gold Hands, IQOSSHOP.NET, Hungary.

2. The Domain Name and Registrar

The disputed domain name <iqosshop.net> (the “Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2020, 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 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 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020. On June 18, 2020, the Center received an informal communication from the Respondent in reply to the Notification of Respondent Default.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 26, 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 following facts are undisputed.

The Complainant is an international tobacco company, with products sold in approximately 180 countries. One of the products manufactured and sold by the Complainant is the IQOS system (“IQOS”). IQOS is, in short, a heating device into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. IQOS was launched by the Complainant in Japan in 2014. Currently, IQOS is available in cities in around 53 markets across the world.

The Complainant owns several trademarks for IQOS, including the International Registration IQOS (word mark) number 1218246, registered on July 10, 2014 (the “Trademark”).

The Domain Name was registered on January 24, 2019.

The Domain Name resolves to a website that allegedly offers for sale IQOS, the product of the Complainant (the “Website”).

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name is confusingly similar to the Trademark. The Domain Name reproduces the Trademark in its entirety, in addition to the non-distinctive and descriptive word “shop”. Internet users that visit the Website will reasonably expect to find a website commercially linked to the owner of the Trademark.

The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the Trademark or to register a domain name incorporating the Trademark. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Trademark.

The Website does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, as the use of the Domain Name does not meet the requirements as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Domain Name in itself suggests an affiliation with the Complainant and the Trademark. Moreover, the Website does not contain information regarding the identity of the owner of the Website and perpetuates the false impression of an official commercial relationship between the Website, the Respondent and the Complainant. Furthermore, the Respondent prominently uses the Trademark in the top left of the Website, a place where Internet users will usually expect to find the name of the online shop and/or the name of the website provider. In addition, the Respondent uses official product images without authorization by the Complainant.

The Domain Name was registered and is being used in bad faith. The Respondent must have been aware of the Trademark when registering the Domain Name. The Respondent started offering IQOS, the product of the Complainant, immediately after registering the Domain Name. Furthermore, IQOS is a purely imaginative and unique term, which is not commonly used to refer to tobacco products or electronic devices.

The Respondent uses the Domain Name with the intention to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of its Website or location or of a product or service on the Website or location, which constitutes registration and use in bad faith. The Website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the Website, which it is not.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(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 Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the trademark.

The Complainant has shown that it has rights in the Trademark.

In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

The Domain Name incorporates the Trademark in its entirety and adds the word “shop”. The Panel finds that the dominant part of the Domain Name is “iqos” and that the element “shop” is descriptive. After all, “shop” associates to a (online) store in which products are sold to the public. Furthermore, the addition of the word “shop” after the Trademark does nothing to avoid the conclusion that the Domain Name is confusingly similar to the Trademark, see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 and WIPO Overview 3.0, section 1.8; see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

The addition of the generic Top-Level Domain (“gTLD”), such as in this case “.net”, is generally irrelevant in the determination of the confusing similarity between the domain name and trademark and is typically disregarded.

Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not formally reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the previously mentioned decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

In order for the use to be qualified as a “bona fide offering of goods”, the offering of the goods must meet several requirements, according to the consensus view in UDRP decisions, often referred to as the “Oki Data criteria”.

Those include, at minimum, the following:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the website of the domain name to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name; and,

- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211.

The Panel finds that the Respondent does not meet the above mentioned requirements.

Based on the evidence, the Panel ascertained that the Website lacks a disclaimer and in fact conveys the impression that the Respondent is an authorized reseller of the Complainant’s products. Therefore, the Respondent tries to provide the impression that the Respondent is somehow affiliated to the Complainant.

Furthermore, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel refers to its findings under section 4.B of this decision and finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant and the absence of a response, the Panel finds that the Trademark is, as well as the activities of the Complainant, internationally known. Furthermore, the Domain Name was registered after the registration date of the Trademark. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name, which is a requisite for a finding of registration of the Domain Name in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026).

The Panel finds that, in accordance with section 3.1.4 of WIPO Overview 3.0, the facts of the case point to an intent on the part of the Respondent to unfairly profit from the Complainant’s rights in this regard. Therefore, the Panel finds that the Respondent has registered the Domain Name in bad faith.

The Domain Name is designed to imply that there is an affiliation between the Respondent and the Complainant, or that the Complainant endorses the Respondent’s activities even though no such affiliation or endorsement exists. UDRP panels have consistently held that it is bad faith to misrepresent an affiliation with a third party where none exists (Caterpillar Inc. v. Matthew Quin, WIPO Case No. D2000-0314).

The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Website or of a product or service on the Website.

Finally, although the previously mentioned lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.

Therefore, the Panel finds that the Respondent uses the Domain Name in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being 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 Domain Name <iqosshop.net> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: July 10, 2020