The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Contact Privacy Inc. Customer 1243399171, Canada / Nguyen Thanh Son, Viet Nam. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2019 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 amendment to the Complaint on July 3, 2019.
The Center verified that the Complaint together with the amendment to 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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 8, 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 4. Factual Background
The Complainant is a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in more than 180 countries.
PMI has developed a specific line of products branded IQOS. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in 44 markets across the world, specifically precisely controlled heating devices into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers. The Complainant claims to have invested USD 6 billion in international sales and marketing efforts resulting in approximately 7.3 million consumers have converted to the IQOS System.
The Complainant is the owner of the following International Trademark Registrations, among others:
- IQOS, International Trademark Registration No. 1218246 registered on July 10, 2014; and
- IQOS (& Design), International Trademark Registration No. 1329691, registered on August 10, 2016.
The Disputed Domain Name was registered on October 26, 2018.
The Disputed Domain Name is currently inactive. However, the Complainant presented evidence that the Disputed Domain Name forwarded to an online shop at supposedly offering the Complainant’s IQOS System. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name identically adopts the Complainant’s IQOS trademark.
Furthermore, the Top Level Domain (“TLD”) “.com” should be disregarded under the first element confusing similarity test. Moreover, the addition of the numerals “247” standing for a common abbreviation used by shops, which means “open 24 hours” (24/7), will lead Internet users to believe that the Disputed Domain Name is linked to the Complainant.
Rights or legitimate interests
The Complainant alleges that the Respondent lacks rights and 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 the Disputed Domain Name incorporating its trademark.
The Complainant further states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent behavior shows a clear intent to obtain an unfair commercial gain.
Moreover, the website uses the Complainant’s official product images and marketing materials without the Complainant’s authorization.
Finally, the website linked to the Disputed Domain Name does not include clear information regarding the identity of the provider of the website.
Registration and use in bad faith
The Complainant submits that the Respondent knew of the Complainant’s IQOS trademark when registering the Disputed Domain Name. The Respondent started offering the Complainant’s IQOS System shortly after registering it. Furthermore, the term IQOS is a solely imaginative term without inherent meaning.
In addition, it is clear that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark IQOS. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the Disputed Domain Name contains the Complainant’s IQOS trademark in its entirety; the addition of the numerals “247” does not change this finding.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2018; four years after the Complainant obtained its International registration for the trademark IQOS, including rights in Viet Nam. The fact that the Respondent started offering the Complainant’s products in a website connected to the Disputed Domain Name immediately after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s IQOS trademark when registering the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Responder to use any of its trademarks or to register the Disputed Domain Name incorporating its IQOS trademark. Neither the Respondent is an authorized reseller of the Complainant’s product.
In addition, the Complainant submitted evidence that the Respondent’s website creates the impression that the online shop is an official dealer of the IQOS System in Viet Nam. Thus, Internet users might have well been under the impression that it is a website created and operated by an official distributor or reseller of the Complainant.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and he has intentionally created likelihood of confusion with the Complainant’s IQOS trademark and website in order to attract Internet users for his own commercial gain.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and its website in order to attract Internet users for his own commercial gain, as described by paragraph 4(b)(iv) of the Policy.
The Disputed Domain Name is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name 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 be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: August 16, 2019
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