The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Samvel Budumian, Armenia. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 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 July 6, 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020. The Center appointed Tony Willoughby as the sole panelist in this matter on August 31, 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. The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint names the underlying registrant as the Respondent. 4. Factual Background The Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes the Complainant has since 2014 introduced the production and sale of non-combustible alternatives, which it markets under the trade mark IQOS. The Complainant is the registered proprietor of numerous trade mark registrations covering those trade marks. For present purposes it is only necessary to cite two of those registrations, namely: United States of America (“United States”) Trade Mark Registration No. 4763088 IQOS (design) registered on June 30, 2015 for a variety of tobacco-related goods in classes 9, 11, and 34. At the United States Patent and Trademark Office the mark is described in the following terms: “The mark consists of the letters “iqos” on a contrasting background; with the letter “q” appearing as a stylized leaf with the stem at the bottom right, and having a shaded interior and surrounded by shaded dots of diminishing size.” United States Trade Mark Registration No. 4763090 IQOS (word) registered on June 30, 2015 for a variety of tobacco-related goods in classes 9, 11 and 34. The Domain Name was registered on May 10, 2020 and is not currently connected to an active website. On June 12, 2020 it was connected to a website featuring an “IQOS smokes” logo, in which the name “Iqos” is represented in substantially the same form as it is used by the Complainant. The website offered for sale at markedly discounted prices what appear to be the IQOS tobacco related products and accessories of the Complainant. They were priced in USD. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its IQOS registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the Domain Name; and the Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar The Domain Name comprises the name “iqos”, the word “smokes” and the generic “.com” Top-Level Domain identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, 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 confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s IQOS trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of that contention the Complainant asserts that it has no connection with the Respondent and has granted the Respondent no permission to use its IQOS trade mark. The website to which the Domain Name was originally connected offered for sale products appearing to be the IQOS products of the Complainant. The Complainant is unable to confirm whether those products were genuine or counterfeit. For the purposes of this decision, the Panel assumes that they were genuine. The screenshots of the Respondent’s website produced in evidence by the Complainant feature images of the Complainant’s products accompanied by a copyright notice crediting the Respondent. The Complainant asserts that the images are copyright images created by the Complainant. That may well be the case, but the Panel was unable to verify it from the evidence before it. The Complainant correctly points out that, on its face, the Respondent’s website appears to be an official website of the Complainant. It features prominently the Complainant’s IQOS logo device and images of and text relating to the Complainant’s products, but contains nothing to indicate the true owner of the site. The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the IQOS trade mark in this or any other way. However, there are circumstances under which the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the respondent is using the domain name to connect to a website selling the goods of the complainant. The issue is addressed in section 2.8.1 of WIPO Overview 3.0: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs 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. Outlined in the ‘Oki Data test’ [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com,WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case: (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 Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” On the basis that the goods on offer at the Respondent’s website were genuine (as indicated above, the Panel has accepted for the purposes of this decision that they were genuine), the Domain Name fails the Oki Data test in one important respect. While the website was devoted exclusively to IQOS products, it appeared to be an official website of the Complainant. At any rate, there was nothing on the website to indicate that it was not. The website did not “accurately and prominently disclose the registrant’s relationship with the trademark holder”. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith Using a domain name to connect to a website offering for sale genuine goods of a complainant, but not accurately and prominently disclosing that the website is not an official website of that complainant may not always lead to a finding of registration and use in bad faith. All depends upon the facts of each particular case. In this case, the Domain Name is likely to be seen by many Internet users as a domain name of the Complainant and on entering the website they will find nothing there to disabuse them. They will be purchasing through that website, confident that they are dealing with the Complainant or at least an entity authorized by the Complainant. The Complainant contends that the Respondent’s website was clearly intended to target the United States market, given that it was an English language site and the pricing of the IQOS products on offer was in USD. The Panel accepts that, for those reasons and in the absence of any challenge from the Respondent, the Respondent’s website was indeed targeting customers in the United States. The point is a significant one, because the Complainant also asserts without any challenge from the Respondent that certain of the products offered for sale on the Respondent’s website are not authorized for sale in the United States. The relevant paragraph in the Complaint is as follows: “The Complainant cannot say for sure whether the products offered through the Disputed Domain Name are genuine IQOS Systems. However, it is important to note that the marketing of tobacco heating products is prohibited in the United States unless the Food and Drug Administration (the ‘FDA’) has authorized the product through the Pre-Market Tobacco Application pathway under the Food, Drug and Cosmetic Act. The Complainant has to-date received authorization from the FDA to sell its IQOS 2.4 device and MARLBORO HeatSticks in the United States. The Complainant’s HEETS sticks and IQOS 3.0, IQOS Multi and IQOS DUO devices are not currently authorized for sale or marketing in the United States. In the result, the Respondent’s sale of HEETS sticks and IQOS 3 into the United States is illegal.” The Panel has no reason to doubt what is said in that paragraph and notes, as stated, that the Respondent has not submitted any challenge to it. Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”. Here, it is clear that the Respondent (a) registered the Domain Name for the purpose for which he has been using it and (b) has been using it deceptively to induce visitors to his website to believe that they are trading with the Complainant or an entity authorized by the Complainant. This use has been particularly egregious in that many of those visitors are like to have been based in the United States and many of the products on offer on the website are not authorized for sale in the United States. The fact that the Domain Name is not currently being used for the offending purpose described above is of no moment. While the Domain Name remains in the hands of the Respondent, the Panel views it as representing an unjustifiable threat hanging over the head of the Complainant and, as such, a continuing use of the Domain Name in bad faith. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, Tony Willoughby
Sole Panelist
Date: September 9, 2020
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