The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC, United States of America / Abraham Toubin , United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 October 25, 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 amended Complaint on October 30, 2019. 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 November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2019. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 11, 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 company which is part of the Philip Morris International group, a leading international tobacco company, with products sold in approximately 180 countries, under brands such as MARLBORO. The Complainant’s parent group is currently in the course of transforming its business from combustible cigarettes to reduced risk products. One of these new products is called IQOS, a controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. The Complainant owns a large portfolio of IQOS trademarks, including: - the United States of America Trademark Registrations No. 4763090 and 4763088, registered on June 30, 2015; - the International Trademark Registrations No. 1338099 and 1329691, registered respectively on August 10, 2016 and on November 22, 2016, designating inter alia, Albania, Armenia, Australia, AzerbaijanBahrainBelarus, China, Colombia, Egypt, Georgia, Israel, Japan, Kenya, Kyrgyzstan, Mexico, Mozambique, Norway, New ZealandPhilippines, Serbia, Russian Federation, Singapore, Turkmenistan, Turkey, Ukraine and United States of America for both trademarks, and also including Uzbekistan and Viet Nam for the latter one. The disputed domain name was registered by the Respondent on August 4, 2019. The Panel accessed the disputed domain name on December 23, 2019, at which time the disputed domain name did not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns IQOS trademark registrations in numerous jurisdictions, including, but not limited to the United States of America. The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the non-distinctive word “now”. It is well established that the applicable Top-Level Domain (“TLD”) is a standard registration requirement and as such is disregarded under the first element confusing similarity test. It is further established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images and marketing material without the Complainant’s authorization. (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark). The Respondent is not making a legitimate noncommercial or fair use of the disputed 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 trademarks owned by the Complainant. The Respondent is not an authorized distributor or reseller of the IQOS System and the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods. The disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the disputed domain name wholly reproduces the Complainant’s registered IQOS trademark together with the non-distinctive word “now”. In addition, the Respondent prominently and without authorization presents the Complainant’s registered logo and uses the Complainant’s official product images and marketing material. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent. (iii) 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 was aware of the Complainant’s IQOS trademark when registering the disputed domain name. The Respondent started offering for sale the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term IQOS is purely an imaginative term and unique to the Complainant. The term IQOS is not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant. It is also evident from the Respondent’s use of the disputed domain name 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 registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in the disputed domain name, the Respondent’s clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images and marketing material, accompanied by a copyright notice claiming the copyright for the website and its contents. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel has no doubt that “iqos” is a term directly connected with the Complainant. Annex 6 to the Complaint shows IQOS international trademark registrations and IQOS trademark registrations in the United States of America owned by the Complainant since at least 2015 (see United States trademark registration No. 4763090, of June 30, 2015). The term “iqos” is wholly encompassed within the disputed domain name, which also includes the suffix “now”, as well as the TLD extension “.com”. Previous UDRP panels have consistently found that descriptive additions (such as the English terms “now”) do not avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; etc.). It is also well established that the addition of a TLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name. Furthermore, the Complainant has shown that the disputed domain name was previously linked to a website allegedly offering the Complainant’s IQOS device for sale, reproducing the Complainant’s trademark and logo, as well as a number of the Complainant’s official product images and marketing materials. However, according to the Complainant the Respondent is not an authorized reseller, nor has obtained any permission for such reproductions of trademarks, logos and copyrighted materials. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 the respondent 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. The disputed domain name encompasses the distinctive term “iqos”. The Panel consider that the mere addition of the term “now” even enhances the perception that the disputed domain name relates to the Complainant, in the present case, as it may suggest that IQOS products could be obtained “immediately” through the disputed domain name. The term “iqos” has no dictionary meaning in English. When the disputed domain name was registered by the Respondent in 2019, the IQOS trademark was already connected with the Complainant’s smoking device. Furthermore, the Complainant brought evidences that recently there were reproductions of the image of the Complainant’s device on the website of the disputed domain name, together with the Complainant’s trademark, logo, and other marketing materials. Therefore, the Panel concludes that it is not feasible that the Respondent was not aware of the Complainant’s trademark and that the adoption of the disputed domain name Currently no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances that the Respondent is (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing a third-party trademark, certainly cannot be used in benefit of the Respondent in the present case. Such circumstances, associated with (d) the use of a privacy service and (e) the lack of any plausible interpretation for the adoption of the term “iqosnow” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 Rodrigo Azevedo
Sole Panelist
Date: December 25, 2019
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