The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Administrator, Registrant of tehraniqos.com, Turkey / Saeed Farahani, Persian ART, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 27, 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 amendment to the Complaint on December 28, 2020. On December 27 and December 28, the Center received four email communications from the Respondent. 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. On December 29, 2020, the Center received an email communication from the Respondent. On January 5, 2021, the Complainant filed a supplemental filing. On January 8, 2021, the Center received a further email communication from the Respondent. On January 21, 2021, the Center notified the commencement of Panel appointment process to the Parties. The Center appointed Steven A. Maier as the sole panelist in this matter on January 28, 2021. 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. Supplemental Filings The Respondent has submitted several emails to the Center in response to the Complaint. The Complainant has submitted a supplemental filing in reply to one such email, in which the Respondent claimed to have been duly authorized by the Complainant to sell its products. The Respondent submitted a short reply to that supplemental filing. The Panel has determined in this case that it is appropriate in the interests of fairness for the various submissions referred to above to be considered and that to take account of such submissions will not interfere disproportionately with the efficient disposition of the case. The Panel therefore admits all of the submissions referred to above. 5. Factual Background The Complainant is a company registered in Switzerland. It is a subsidiary of Philip Morris International, Inc., which is an international tobacco company. The Complainant offers a range of “reduced risk products” under the name and trademark IQOS. The products comprise a controlled heating device into which tobacco sticks are inserted in order to generate a nicotine-containing aerosol. The Complainant’s IQOS branded system also includes a pocket charger. The Complainant is the owner of various registrations for the trademark IQOS, including for example the following: - International trademark number 1218246 for the word mark IQOS, registered on July 10, 2014, in International Classes 9, 11, and 34; and The disputed domain name was registered on September 3, 2020. The Complainant has submitted evidence that the disputed domain name has resolved to a website at “www.tehraniqos.com”. The website was headed “TEHRAN IQOS” with the name IQOS resembling the IQOS Logo and also contained numerous product images including IQOS branded items. The website was principally in the Persian language, but the Complainant has submitted a translation from which it is clear that the website offered IQOS branded products for sale. 6. Parties’ Contentions A. The Complaint The Complainant submits that its parent company is the world’s leading international tobacco company, selling products in over 180 countries. It states that its IQOS product was first introduced in Japan in 2014 and is now available in four different versions. It states that it has invested over USD 6 billion in promoting the IQOS products and that the system now has over 16.4 million customers in over 61 locations worldwide. It states that its IQOS products have been almost exclusively supplied via official or authorized stores and websites. The Complainant exhibits corporate information concerning its parent company and its IQOS products and system. The Complainant submits that the disputed domain name is confusingly similar to its IQOS trademark, which constitutes an imagined term with no inherent meaning. The Complainant submits that the disputed domain name wholly incorporates that mark, preceded by a geographical term, “tehran”, which is incapable of distinguishing the disputed domain name from its trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its IQOS mark and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent’s use of the disputed domain name for its website cannot be legitimate, because the website falsely represents an affiliation with the Complainant, using the IQOS mark, the IQOS Logo, and the Complainant’s own product images throughout. The Complainant further submits that the Respondent cannot meet the criteria for any legitimate use of its trademark as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. In particular, the Complainant submits that the Respondent’s website offers third-party, competing accessories as well as the Complainant’s own, and that nowhere on the website does the Respondent disclose its true identity or any indication that it is not affiliated with the Complainant. On the contrary, the website includes the Complainant’s own product images and other marketing materials, but with a copyright notice claiming ownership of those materials. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that it is obvious from the content of the Respondent’s website that it was aware of the Complainant’s IQOS trademark at the time it registered the disputed domain name. The Complainant further submits that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. In particular, the Complainant contends that the Respondent has falsely represented its website to be officially connected with the Complainant in order misleadingly to attract Internet users to that website. Further, it has used that website to sell goods including those supplied by the Complainant’s competitors. B. Respondent In its email to the Center dated December 27, 2020, the Respondent stated that it did not understand the reason for the proceeding, as it was the official representative of the Complainant and had all necessary documentation to authorize its activities. The Respondent exhibited a certificate purporting to have been issued by “Philip Morris Products S.A.” and to have been signed by “Vice and Secretary” and by “Chairman”. The certificate stated that “Tehran IQOS” was approved for after-sales service agency and was permitted to perform warranty and repair services in the Middle East. The certificate was dated October 27, 2020 and stated that it was valid for five years. In its submission dated December 29, 2020, the Respondent makes no further reference to the above certificate. It states that “our goal in working on the IQOS product brand is to spread the company’s advertising in countries where services are not provided”. The Respondent states that the Complainant has no representation in Iran and that the Respondent has introduced the Complainant’s products to Iranian consumers. The Respondent submits that it has sold only merchandise purchased from IQOS dealers in Russia, Armenia, and Europe. However, it also states that it has used “accessories from companies that have accessories that can be used under the IQOS brand for a variety of IQOS products”. The Respondent submits that it has provided repair services that enhance the IQOS brand and have undertaken free advertising for the Complainant. The Respondent states that it sought to contact the Complainant on numerous occasions to request a dealership and service license, but the Complainant did not respond. C. Complainant’s Further Submission and Respondent’s Reply In response to the Respondent’s earlier submission, the Complainant contends that the certificate exhibited by the Respondent is fake. The Complainant states that the names and roles indicated on the certificate do not exist. The Complainant states that IQOS products are not currently offered in Iran and that the Respondent has contradicted its initial submission of the certificate by subsequently stating that it failed to obtain any license from the Complainant. The Respondent denies having forged any document. It states that it was contacted by someone from the Complainant seeking an IQOS representative and responded to them on WhatsApp. 7. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (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 Complainant has established that it is the owner of registered trademark rights in the mark IQOS. The Panel finds that the mark is distinctive and has become associated with the Complainant’s “reduced risk” smoking products. The disputed domain name comprises the Complainant’s IQOS mark, preceded by the geographical term “tehran”. This additional term does not distinguish the disputed domain name from the Complainant’s trademark and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests It is common ground that the Respondent has used the disputed domain name for the purposes of a website selling IQOS branded products, comprising or including the Complainant’s goods. In certain limited circumstances, it may be permissible for a registrant to use a domain name which incorporates another party’s trademark for the purpose of reselling that trademark owner’s goods. The criteria accepted by UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., supra and are further discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1. These criteria include the requirement that the website must accurately and prominently disclose the registrant’s relationship with the trademark holder, with the object that visitors to the website are not misled into believing that the website is operated or authorized by the trademark owner. In this case, the Panel finds on the evidence that the Respondent’s website clearly fails to meet that requirement. Not only does the website fail to include any relevant disclaimer, but the Panel finds that it also makes prominent use of the IQOS trademark, the IQOS Logo, and the Complainant’s product images in a manner that is likely to mislead Internet users into believing that the website is authorized by or affiliated with the Complainant. This cannot constitute bona fide commercial use and the Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the composition of the disputed domain, consisting of the Complainant’s IQOS trademark and a geographical term, cannot constitute bona fide use in these circumstances, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. C. Registered and Used in Bad Faith The Respondent does not deny having used the disputed domain name for the purpose of selling goods under the Complainant’s IQOS trademark and there can be no doubt, therefore, that the Respondent was aware of that trademark at the time it registered the disputed domain name and did so specifically with the trademark in mind. The Panel finds further that the disputed domain name is inherently misleading, comprising the Complainant’s distinctive IQOS trademark with the geographical term “tehran”. The Panel accepts the Complainant’s submission that Internet users are likely to be deceived into assuming that the disputed domain name is operated or authorized by the Complainant. The Respondent’s bad faith conduct in this regard is exacerbated by its use of the disputed domain name for the purposes of a website, which impersonates the Complainant by making use of its IQOS trademark, IQOS Logo, and product images and failing to include any relevant disclaimer. The Panel finds therefore that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel also notes the Respondent’s contradictory submissions by way of response, including its initial submission of a certificate purporting to show that it was an authorized representative of the Complainant. The Panel finds on the evidence that the certificate is not genuine and that the Respondent has provided no credible explanation for having initially presented this evidence. Furthermore, this submission is contradicted by the Respondent’s later submission that it had attempted but failed to obtain a license from the Complainant. In the view of the Panel, this matter affirms the Respondent’s bad faith in connection with the disputed domain name. The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith. 8. 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, Steven A. Maier
- International trademark number 1329691 for a figurative mark comprising the word IQOS in stylized lettering with a distinctive blue and green colour scheme (“the IQOS Logo”). The trademark was registered on August 10, 2016 in International Classes 9, 11 and 34.
Sole Panelist
Date: February 2, 2021
Full & Egal Universal Law Academy