The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mitra Haman, Canada. 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 16, 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 16, 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 16, 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 February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on March 19, 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 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 is the owner of various trademark registrations, 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; - 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”), registered on August 10, 2016 in International Classes 9, 11 and 34; and - International trademark number 1343294 for the word mark THIS CHANGES EVERYTHING, registered on December 12, 2016 in International Class 18. The disputed domain name was registered on December 8, 2020. The Complainant has submitted evidence that the disputed domain name has resolved to a website at “www.iqosiran.com”. The website was headed with the IQOS Logo and the term “THIS CHANGES EVERYTHING” and contained numerous product images of IQOS branded items. The website was principally in the Persian language, but clearly purported to offer the Complainant’s IQOS branded products for sale. 5. Parties’ Contentions A. Complainant 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 17.6 million customers in over 64 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. It states that the disputed domain name incorporates that trademark in full together with the geographical term “iran” which is not sufficient to distinguish the disputed domain name from the IQOS trademark. The Complainant further contends that the generic Top-Level Domain (“gTLD”) “.com” is to be disregarded for the purpose of assessing confusing similarity. 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, the THIS CHANGES EVERYTHING trademark and the Complainant’s own official product images. 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 falsely presents itself as an official supplier of the Complainant’s products in the Islamic Republic of Iran, and that nowhere on the website does the Respondent disclose its true identity or any indication that it is not affiliated with the Complainant. 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 sought to divert Internet users to its website by using the Complainant’s trademarks and marketing materials to imply an official affiliation with the Complainant in the Islamic Republic of Iran. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. 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 disputed domain name comprises the Complainant’s IQOS mark together with the geographical term “iran”. This additional term does not prevent the Complainant’s trademark from being recognizable in the disputed domain name 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 The Panel finds the disputed domain name to be inherently misleading. In particular, the composition of the disputed domain name, consisting of the Complainant’s IQOS trademark and a geographical term, effectively impersonates or suggests sponsorship or endorsement by the Complainant: see e.g. section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the Panel finds that the Respondent has used the disputed domain name for the purposes of a website selling what appear to be the Complainant’s IQOS branded products. 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 section 2.8.1 of WIPO Overview 3.0. Those 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 Complainant’s evidence, which is not contradicted by the Respondent, that the Respondent’s website fails to meet that requirement. Not only does the website fail to include any relevant disclaimer, but it also makes prominent use of the IQOS trademark, the IQOS Logo, the THIS CHANGES EVERYTHING trademark and the Complainant’s own 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. The circumstances outlined above cannot constitute bona fide commercial use of the disputed domain name and the Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Respondent has used the disputed domain name for the purpose of selling goods under the Complainant’s IQOS and other trademarks and there can be no doubt, therefore, that the Respondent was aware of the IQOS trademark at the time it registered the disputed domain name and did so specifically with that trademark in mind. The Panel finds further that the disputed domain name is inherently misleading, comprising the Complainant’s IQOS trademark together with the geographical term “iran” and 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 in this regard is exacerbated by its use of the disputed domain name for the purposes of a website, which further impersonates the Complainant by making use of its IQOS trademark, IQOS Logo, THIS CHANGES EVERYTHING trademark and the Complainant’s official product images, while 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 finds therefore that the disputed domain name has been registered and is being 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, Steven A. Maier
Sole Panelist
Date: March 23, 2021
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