The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Visavavit Saidum, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 May 29, 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 June 1, 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 June 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020. The Center received the Respondent’s communications by email on June 1, 2020, on June 4, 2020, and on June 16, 2020. The Respondent did not submit a formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on June 24, 2020. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 8, 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 is part of an international group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the globally-known trademark MARLBORO. The Complainant and its group have developed various products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014 and now is sold in 53 markets across the world (but not in Thailand). The product identified by the mark IQOS is a controlled heating device, collectively referred as IQOS System, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products (identified by the marks HEETS or HEAT STICKS) are inserted and heated to generate a flavored nicotine-containing aerosol. The Complainant holds a large portfolio of registered trademark rights in the mark IQOS in many jurisdictions, denominative or with a specific graphic representation, including International Registration No. 1218246 IQOS, word mark, registered on July 10, 2014, in classes 9, 11, and 34, designating, among other jurisdictions, Thailand; Thailand Trademark No. TM416024 IQOS, word mark, registered May 14, 2014, in class 34; Thailand Trademark No. C 416616 IQOS, figurative, registered on May 14, 2014, in class 34; and International Registration No. 1461017 IQOS, figurative, registered on January 18, 2019, in classes 9 and 34, designating, among other jurisdictions, Thailand; (collectively the “IQOS mark”). The disputed domain name was registered on March 5, 2020, and it currently resolves to a page with an Internet browser error message. However, according to evidence filed by the Complainant, it was previously linked to a website, in Thai language, allegedly offering for sale the Complainant’s IQOS System products, as well as competing third party accessories of other commercial origin. This website included in the left side of its heading, before the text content of the site, the Complainant’s registered IQOS figurative mark and the words “Thailand store” written in smaller size front underneath the Complainant’s logo. This website’s content did not show any details regarding the identity of its provider and/or its lack of relationship with the Complainant, and included a number of the Complainant’s official product images, providing a copyright notice at the bottom of the site, which claimed copyright in all the material presented on the site. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: Through its intensive use and promotion, with a USD 6 billion investment, the trademark IQOS has achieved considerable international success and reputation with approximately 10 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers. The disputed domain name reproduces the Complainant’s trademark IQOS in its entirety, with the addition of the geographical term “Thailand” and the descriptive word “store”, which does not avoid confusing similarity. Any Internet user visiting a website provided under the disputed domain namewill reasonably expect to find a website commercially linked to the owner of the IQOS mark. This unlawful association is exacerbated by the use of the Complainant’s official product images without authorization. The Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark IQOS, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. 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 Complainant’s trademark. The website provided under the disputed domain name did not meet the requirements for a bona fide offering of goods by resellers or distributors established in, Oki Data Americas, Inc. v. ASD.,WIPO Case No. D2001-0903. This website offered not only the Complainant’s products but also competing tobacco accessories of other commercial origin. The disputed domain name in itself and the content of the website linked to the disputed domain name suggest affiliation with the Complainant and its trademark IQOS. The Respondent’s website includes no information regarding the identity of its provider, and displays various Complainant’s official product images (falsely claiming copyright in this material), as well as the IQOS mark and its logo in a prominent position (with no authorization), which reinforces the false impression of an official commercial relationship between this website and the Complainant. The likelihood of association is amplified by the fact that the Complainant’s products are primarily distributed through official or endorsed distributors, and the use of the disputed domain name creates the false impression that the Complainant has officially introduced its products in the Thai market. The disputed domain name was registered and is being used in bad faith. As the Respondent started offering the Complainant’s products immediately after registering the disputed domain name, it is evident the Respondent knew of the Complainant’s trademark when registering the disputed domain name. Further, the term “iqos” is purely imaginative and unique, not being commonly used in the tobacco sector. The use of the disputed domain name reveals that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its registered trademark, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website. Furthermore, the fact that the Respondent is using a privacy protection service to hide its identity is a factor indicating bad faith. The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent sent several email communications to the Center indicating that he had registered the disputed domain name for a third party customer, providing information and contact details of the alleged real owner of the disputed domain name. The Respondent indicated that the alleged real owner of the disputed domain name was not going to use the IQOS mark anymore and would be willing to transfer the disputed domain name to the Complainant, but he refused to sign a Standard Settlement Form provided by the Center. The Respondent further indicated that all IQOS products offered on the website linked to the disputed domain name were original products imported from Japan and the Republic of Korea directly purchased from IQOS stores, making the owner of the site linked to the disputed domain name as a reseller of these products for the Thai market. Furthermore, the Respondent indicated that it was not possible to get the Complainant’s permission for the use its trademark IQOS in Thailand because electronic cigarettes are illegal in Thailand. 6. Discussion and Findings The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Identical or Confusingly Similar In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1, WIPO Overview 3.0. The Complainant indisputably has rights in the registered trademark IQOS. The disputed domain name incorporates this mark in its entirety followed by the joined term “thailandstore”, which does not avoid confusing similarity with the trademark. The Complainant’s trademark IQOS is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. The Respondent has acknowledged that the disputed domain name was used in connection with an online store related to the Complainant’s IQOS System products addressed to the Thai market, which allegedly obtained these products from the Complainant’s official stores located in other jurisdictions, namely Japan and the Republic of Korea, importing these products to resell them in the Thai market.1 It is further to be noted that resellers or distributors, using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, if the following cumulative requirements are meet: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD,WIPO Case No. D2001-0903). See section 2.8, WIPO Overview 3.0. The evidence in the file shows the disputed domain name has been linked to a website, which commercialized alleged original IQOS System products – as well as competing tobacco accessories of other commercial origin – and moreover did not prominently disclose the lack of relationship with the Complainant. On the contrary, the content of this website leaded to create an affiliation with the Complainant and its IQOS mark. This website included the IQOS logo in left side of its heading (where the origin of the site is normally located) and contained various official images of the Complainant’s products, alleging copyright in relation to the said website and to its content, which contributed to a risk of affiliation and confusion. A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a geographical term (“Thailand”) and a dictionary term (“store”), which also may point to the Complainant and its trademark, as an indication of one of its official stores related to the Thai market. Therefore, the Panel considers that there is a risk of implied affiliation. It is further remarkable the Respondent’s attitude apparently taking down the website linked to the disputed domain name. All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s IQOS mark in its entirety adding terms (“thailandstore”) that reinforce the likelihood of confusion or implied affiliation, creating the impression that the disputed domain name refers to the Complainant’s official store or distributor for Thailand, suggesting sponsorship or endorsement by the Complainant; (ii) the Complainant’s trademark is notorious in its sector and the Complainant operates internationally; (iii) the Respondent used a privacy protection service to hide his identity in the whoIs record of the disputed domain name; (iv) the website that was linked to the disputed domain name included prominently the Complainant’s figurative trademark (in the left side of its heading), as well as various official product images of the Complainant’s IQOS products, claiming copyright for its content; (v) the Respondent has not offered an acceptable explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith; and (vi) the website linked to the disputed domain name has been apparently taken down. It is further to be noted that non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the IQOS mark with the intention of obtaining a free ride on the established reputation of the Complainant, seeking to mislead Internet users to believe that there is a connection between the disputed domain name and the Complainant, which constitutes bad faith. It is further remarkable that the disputed domain name has been used in a business of – in the Respondent’s own words – questionable legality. All of the above-mentioned circumstances leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel considers that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under 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 Reyes Campello Estebaranz 1 The Respondent further has indicated that the commercialization of electronic cigarettes is illegal in Thailand. The Panel considers that it may be inferred from the Respondent’s allegations that the dispute domain name has been used in connection to an activity or a business of questionable legality, which cannot be considered a bona fide use under the Policy. See section 2.13 WIPO Overview 3.0. Put another way, the Panel fails to see how, if true, this would aid the Respondent’s case.
Sole Panelist
Date: July 15, 2020
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