The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Lucian Danut Costea of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2018, 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 June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.
The Center appointed Alexandre Nappey as the sole panelist in this matter on July 16, 2018. 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 Swiss company that is part of a group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company: it develops and sells tobacco products such as so called “Reduced Risk Products” (“RRPs”), in approximately 180 countries.
One of these RRPs developed and sold by PMI is branded “IQOS”, which PMI sells in 38 markets around the world, through PMI’s official stores and websites and selected authorized distributors and retailers.
The Complainant owns many IQOS trademarks worldwide among which:
- United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016;
- United Arab Emirates Registration IQOS (word) No. 211138 registered on June 14, 2016;
- United Arab Emirates Registration (device) No. 211142 registered on March 16, 2016;
- United Arab Emirates Registration (device) No. 211143 registered on March 16, 2016.
The disputed domain name was registered by the Respondent on March 22, 2018.
The disputed domain name resolves to a website purporting to be an online store for the Complainant’s products. The Respondent also operates a Facebook page through which the Respondent is promoting and offering IQOS branded products. 5. Parties’ Contentions A. Complainant
(1) The Complainant first alleges that the disputed domain name is similar to its earlier trademark IQOS, to the point of creating confusion.
The addition of geographical wording to a trademark, here “uae” which stands for United Arab Emirates in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its IQOS trademarks or to register a domain name incorporating IQOS trademark:
- the Respondent is not an authorized distributor or reseller of the IQOS products;
- the website provided under the disputed domain name does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods.
(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademarks when registering the disputed domain name: the Respondent started offering the Complainant’s IQOS products immediately after registering it and the term IQOS is a purely imaginative term and has no inherent meaning.
The Respondent’s website uses the Complainant’s registered IQOS trademarks andlogo, clearly suggesting that the website belongs to the Complainant or that the Respondent is an official affiliated dealer endorsed by the Complainant
Moreover, the Respondent’s website does not provide any information on the true identity of the website provider, which clearly shows that the Respondent wishes to intentionally create the impression that the products offered on the Respondent’s website are provided by the Complainant or at least by an official dealer, with the clear objective of misleading Internet users as to the origin or source of the website and the products offered and thereby attract, for commercial gain, Internet users to the website.
Finally, the Respondent is not only using the Complainant’s IQOS trademark to promote the Complainant’s IQOS branded products, but also to promote competing products of other commercial origin. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights on the locution IQOS.
The Panel finds that the disputed domain name is confusingly similar to the registered IQOS trademarks owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s IQOS trademark.
As a common and necessary technical feature, the addition of the Top-Level Domain (“TLD”) suffix “.com” may be disregarded.
The addition of three letters “uae”, the common acronym for “United Arab Emirates” which directly refers to the Respondent’s location, does not avoid confusing similarity with the trademark IQOS. See for instance: Carrefour v. Pan Shuai Lou,WIPO Case No. DCO2017-0047:
“The addition of the letters “uae” do not remove the confusing similarity with the Complainant’s CARREFOUR trademark.”
See also: Dr. lng. h.c. F. Porsche AG v. im 9uae Desgate,WIPO Case No. D2014-0967.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests.
The Complainant has stated that it has not authorized, licensed or consented to the Respondent’s use of its IQOS trademarks.
The Complainant submitted printouts showing that the website at “www.” displays the Complainant’s trademarks and logo under the appearance of an official IQOS website.
The prominent use of the Complainant’s IQOS trademark on this website may lead Internet users to confusion, considering also there is no disclaimer available on the website operated under the disputed domain name .
Such use does not give rise to rights or legitimate interests for the purposes of the Policy. See for example: Philip Morris Products S.A. v. Almas Tagybergenov,WIPO Case No. D2018-0243:
“The content of the website not only fails to identify the lack of any relationship between the Complainant and the operator of the website, it wrongly suggests the existence of such a relationship. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.”
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a UDRP panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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 it has engaged in a pattern of such conduct; or
(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 its website or location or of a product or service on its website or location.”
Since IQOS is a widely-registered trademark which further predates by years the registration of the disputed domain name, and given the Respondent’s use of the disputed domain name, it is obvious that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name.
Here, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the IQOS trademark at the time of registration of the disputed domain name, since the use that the Respondent made of the website linked to the disputed domain name shortly after registration clearly shows that the Respondent knew of the Complainant’s trademark.
The Complainant submitted printouts showing that the Respondent’s website reproduced the Complainant’s registered trademarks and logo at the top of the website and used the Complainant’s marketing material, which suggests that the website under the disputed domain name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.
The Respondent’s website does not provide any information on the true identity of the website provider but rather holds itself out as an official retailer for IQOS branded products in the United Arab Emirates, thereby creating the impression that the products offered on the website are provided by the Complainant or at least by an official dealer.
In the circumstances the Panel holds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. See AB Electrolux v. Kirill Urusov,WIPO Case No. D2018-1275:
“The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant’s prior registered and famous trademark, which confirms the bad faith.”
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy. 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, be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: August 6, 2018
Full & Egal Universal Law Academy