The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Danil Sepot, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2020, 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 February 14, 2020, 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 February 18, 2020. 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 February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2020. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 30, 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 Complainant, Philip Morris Products SA, is part of the Philip Morris International Inc. (“PMI”) group of companies. PMI is an international tobacco company whose products are sold in approximately 180 countries. Its brand portfolio contains brands like MARLBORO, an international cigarette brand. Further information about PMI and its business is contained in excerpts from its corporate website “www.pmi.com” exhibited at Annex 4 to the Complaint. PMI is known for innovating its products including the development of Reduced Risk Products (“RRPs”) as a substitute for combustible cigarettes. One of the RRPs that it has developed is called IQOS which is a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger designed to charge the IQOS Holder. These are collectively termed the IQOS System. It was first launched in Nagoya, Japan in 2014 and has since established an 18.3 percent share of the Japanese market. It is now available in 52 markets worldwide. As a result of an USD 6 billion investment and international sales and marketing effort it has achieved considerable international success. Approximately 9.5 million customers worldwide have converted to the IQOS System. The IQOS System has been distributed through PMI’s official IQOS stores, websites, and selected distributors and retailers. Further details of the IQOS System are contained in extracts from the PMI website exhibited at Annex 5 to the Complaint. For its smoke-free products the Complainant owns a large portfolio of trade marks throughout the world including International Registrations: - IQOS, registration No. 1218246, registered on July 10, 2014; - IQOS (device), registration No.1338099, registered on November 22, 2016; and, - IQOS HEATCONTROL, registration No. 1325565, registered on August, 8, 2016. Printouts of the relevant trade mark databases for these registrations are exhibited at Annex 6. A list of the Complainant’s other registrations for HEETS and IQOS are exhibited at Annex 7. The disputed domain name As evidenced in the Complaint, the disputed domain name is linked to an online shop allegedly selling and offering the Complainant’s IQOS System as well as competing third party product (the “Website”). The Website is provided in Ukrainian, shows prices in Ukrainian Hryvnia currency and appears directed to the Ukraine. It purports to be an official online retailer of the IQOS System by using the mark IQOS together with the non-distinctive and dictionary word “selection”. At the top of the Website the Complainant’s registered logo IQOS is prominently displayed. The Respondent also promotes an Instagram and Facebook page using “iqos_selection_” and “Iqos Selection” respectively. In the online shop provided under the disputed domain name the Respondent is offering the IQOS System as well as competing third party tobacco products: for example, “KENT Neostiks”. The Website is also using a number of the Complainant’s official product images and marketing materials as well as a copyright notice falsely claiming copyright in the material presented thus strengthening the impression of an affiliation with the Complainant. A pictorial comparison of extracts from both parties’ websites are set out in the Complaint. In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true and proceeds to determine the Complaint on the basis of that evidence. 5. Parties’ Contentions A. Complainant The Complainant submits: i. the disputed domain name is confusing similar to the trade mark IQOS in which the Complainant has rights; ii. the Respondent has on the evidence no rights or legitimate interests in respect of the domain name; and, iii. the disputed domain name was on the evidence registered and is being used in bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Having considered the evidence of the Complainant’s registered trade mark IQOS set out in Section 4 above the Panel finds that the Complainant owns trade mark rights in the mark IQOS, which predate the date of registration of the disputed domain name. The Complainant submits that the test of confusing similarity is satisfied when “the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name and therefore will likely be associated with the respective trademark”. This was set out in an earlier UDRP decision involving a PMI company: Philip Morris USA Inc. v Stephen Scully, J&S Auto Repair,WIPO Case No. D2015-1001. Applying that test it is apparent that the use of “iqos” in the disputed domain name is confusingly similar to the Complainant’s trade marks IQOS. The use of the dictionary term “-selection” as part of the disputed domain name does not prevent a finding of confusing similarity. Furthermore, “iqos” is the distinctive and dominant part of the disputed domain name. It is also well-established that the applicable generic Top-Level Domain (“gTLD”) “.com” can be disregarded in finding confusing similarity. In the Panel’s view it follows that the disputed domain name is confusingly similar to the trade mark IQOS in which the Complainant has registered rights and finds accordingly. B. Rights or Legitimate Interests The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trade marks including registering a domain name incorporating the Complainant’s trade mark IQOS. It also submits, on the evidence, that the Respondent is not making a legitimate, noncommercial or fair use of the domain name. To the contrary the Respondent’s conduct shows a clear intent to obtain unfair commercial gain by misleadingly diverting consumers to its Website. The Respondent is not authorized by the Complainant to distribute the IQOS System. It is selling competing tobacco products and accessories as can be seen from its Website. The Website itself does not meet the requirements for a bona fide offering of goods. In the Panel’s view, based upon the evidence set out in Section 4 above, what is particularly compelling is that the disputed domain name suggests an affiliation with the Complainant and its IQOS trade mark. The Respondent’s Website “prominently and without authorization” uses the Complainant’s IQOS trade mark at the top left of its Website where consumers would usually expect to find the trading name of the online shop and/or website provider. Moreover, the Website utilises the Complainant’s official product images and marketing materials, on the evidence, without authorization. It also seeks to claim copyright in this material. In summary the Complainant submits that the actions of the Respondent have the effect of misleading Internet users and relevant consumers regarding the relationship between its Website and the Complainant. They are falsely led to believe, contrary to the fact, that the Website is endorsed by the Complainant and that the Respondent is an “official / endorsed distributor” of the Complainant. Taking into account that there is no contrary evidence from the Respondent it follows that the Complainant has proved this element of the Policy. The Respondent has no rights or legitimate interests in respect of the disputed domain name within paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant submits that on the basis of its evidence the Respondent knew of the existence of the Complainant’s registered trade mark IQOS when registering the disputed domain name. It is no coincidence that the Respondent started offering the Complainant’s IQOS System immediately after registering the domain name. The mark IQOS is an invented, imaginary word unique to the Complainant’s product. There is therefore force in the submission that “it is beyond the realm of reasonable coincidence” that the Respondent chose to use the mark for a trading website offering similar products, without the intention of invoking a misleading association with the Complainant. On the evidence it is also clear that the Respondent registered and used the domain name with the intention to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s mark IQOS. The Website, as evidenced in the Complaint, reproduces and uses the IQOS trade mark to create the false impression that the Complainant or an affiliated dealer is the source of the Website. This is supported by the Respondent’s unauthorized use of the Complainant’s official product images and marketing materials including the copyright notice referred to above. The Respondent also specifically refers to an Intellectual Property Rights clause appearing on the Website in Ukrainian which, when translated, is further evidence of an intention to create a false or misleading impression of a connection or affiliation with the Complainant. Futhermore, the Respondent is offering competing products of other commercial origin. Taking also into account the absence of evidence from the Respondent, the Panel finds that the disputed domain name was registered and is being used in bad faith within Paragraph 4(a)(iii) 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 Clive Duncan Thorne
Sole Panelist
Date: April 13, 2020
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