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 (“United States”) / Abraham Toubin, United States. 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 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2021, 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 24, 2021 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 26, 2021. 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 March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021. The Center appointed Assen Alexiev as the sole panelist in this matter on April 8, 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. Factual Background The Complainant is affiliated to Philip Morris International Inc., which is a leading international tobacco company with products sold in about 180 countries. The Complainant’s group of companies has developed the IQOS system – a heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The IQOS system was first launched in Japan in 2014 and has 20% share of the market in this country. The IQOS system is now available in key cities in 64 countries through official IQOS stores and websites and selected authorized distributors and retailers and has about 17.6 million users. The Complainant is the owner of the following trademark registrations for the signs IQOS (the “IQOS trademark”): - the United States word trademark IQOS with registration No. 4,763,090, registered on June 30, 2015 for goods in International Classes 9,11, and 34; and The disputed domain name The Complainant points out that the Respondent’s website is directed to the market in the United States, because the disputed domain name includes the Complainant’s IQOS trademark together with the geographical abbreviation for the United States, the website is in the English language and the products on it are offered for sale with prices indicated in USD. However, the Complainant cannot confirm whether these products are genuine IQOS system products. The Complainant notes 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 for sale and marketing, and that the Complainant’s HEETS sticks do not have such authorization in the United States. In the result, the sale of HEETS sticks in the United States through the Respondent’s website is illegal. The Complainant states that the disputed domain name is confusingly similar to the IQOS trademark, because it reproduces the IQOS trademark in its entirety in combination with the non-distinctive geographical abbreviation for the United States. The Complainant notes that any Internet user when visiting the website at the disputed domain name would expect to find a website commercially linked to the Complainant. The Respondent’s website prominently uses the IQOS trademark at the top of the website, where users usually expect to find the name of the online shop or the name of the provider of the website, and uses the Complainant’s official product images without the Complainant’s authorization, which strengthens the false impression of an affiliation with the Complainant. The Complainant further notes that the Respondent’s website does not show any details regarding the provider of the website and does not acknowledge the Complainant as the brand owner of the IQOS System, leaving Internet users with the false impression that the online shop belongs to the Complainant or to an official distributor of the Complainant. The website contains an unremarkable disclaimer stating “THIS IS NOT PMI HOMEPAGE (PHILIP MORRIS)” (sic). This information is ambiguous and inaccurate and makes no mention of the IQOS trademark and its owner, and does not explain the relationship (or lack thereof) between the provider of the website and the IQOS trademark. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not licensed the Respondent to use the IQOS trademark or to register a domain name incorporating this trademark, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to obtain an unfair commercial gain by misleadingly diverting consumers. The Complainant points out that 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 for a bona fide offering of goods. The composition of the disputed domain name suggests an affiliation with the Complainant and its IQOS trademark, the associated website prominently and without authorization presents the IQOS trademark at the top center of the website and uses the Complainant’s official product images without authorization, and contains no information about the identity of its provider, thus strengthening the false impression of an official commercial relationship between the website and the Complainant. The disclaimer included in the website does not effectively disclose the relationship between the operator of the website and the owner of the IQOS trademark. In addition, the Respondent uses the disputed domain name illegitimately, because the Complainant does not currently offer for sale its HEETS products and IQOS Multi devices and HEETS branded sticks given they have not yet been authorized for sale in the United States by the FDA. However, the Respondent’s online shop at the disputed domain name creates the false impression that the Complainant has officially introduced its HEETS products and IQOS Multi devices into the United States market. The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name, which is evident from the fact that the Respondent started offering the Complainant’s IQOS system immediately after registering the disputed domain name, and the term “Iqos” is imaginative and unique to the Complainant, and is not commonly used to refer to tobacco products or electronic devices. This shows, according to the Complainant, that the Respondent chose the disputed domain name with the intention of invoking a misleading association with the Complainant. The Complainant further points out that the Respondent’s use of the disputed domain name shows that it registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the IQOS trademark as to the affiliation or endorsement of its website or of the products on its website. The reproduction of the Complainant’s IQOS trademark in the disputed domain name and in the title of the website and the use of the Complainant’s official product images suggest that the Complainant or an affiliated dealer of the Complainant is the source of the website. The Complainant also notes that the Respondent’s website creates the false impression that the Complainant has engaged in an illegal conduct by officially introducing its IQOS Multi devices and HEETS products into the United States market without an FDA approval. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the IQOS trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) portion of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD portion of the disputed domain name. The relevant part of the disputed domain name is therefore the second-level domain portion “iqosusa”. It consists of the elements “iqos” and “usa”. The “iqos” element, which dominates in this sequence, is identical to the IQOS trademark, while the “usa” element is an abbreviation commonly used to refer to the United States. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In view of the above, the Panel finds that the disputed domain name is confusingly similar to the IQOS trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the IQOS trademark or to distribute the IQOS products, and that the Respondent is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for a website that offers the Complainant’s IQOS products for sale, displays the Complainant’s IQOS trademark and official product images in the website without authorization by the Complainant and without disclosing the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. As summarized in section 2.8.1 of WIPO Overview 3.0, panels under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, if they comply with certain cumulative requirements, among which is the requirement that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder. This requirement has not been complied with in the present case. The disputed domain name is confusingly similar to the IQOS trademark and Internet users may regard it as referring to a location where the Complainant’s IQOS products are offered for sale in the United States. The disputed domain name resolves to a website that offers the Complainant’s IQOS products, displays the IQOS trademark and product images without identifying the supplier of the offered goods and without disclosing the lack of relationship between the Parties. The notice that the website is not the homepage website of PMI (Philip Morris) (sic) does not inform visitors that the website has not been authorized by the Complainant as the owner of the IQOS trademark and that there is no relationship between the Complainant and the Respondent. In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s IQOS trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract and mislead Internet users that the Respondent’s website which offers the Complainant’s products has been authorized by the Complainant and is commercially linked to it. To the Panel, such conduct does not appear to be legitimate and giving rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name fully incorporates the IQOS trademark in combination with the element “usa” and thus appears to be directed at the market in the United States. The Respondent does not deny that it is linked to a website that offers the Complainant’s IQOS products and displays the IQOS trademark and product images, without disclosing the lack of relationship with the Complainant. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the IQOS trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official or authorized online location where the Complainant’s IQOS products are offered for sale in the United States, and has used the disputed domain name to offer the Complainant’s products for commercial gain. As also noted by the Complainant, the content on the Respondent’s website could create the impression that the Complainant has illegally introduced its IQOS Multi devices and HEETS products into the United States market, which may tarnish the IQOS trademark. Taking the above into account, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Assen Alexiev
- the United States combined trademark IQOS with registration No. 4,763,088, registered on June 30, 2015 for goods in International Classes 9,11, and 34.
Sole Panelist
Date: April 22, 2021
Full & Egal Universal Law Academy