The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Christian Carrion, Ecuador.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 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 July 21, 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 July 22, 2021. On July 22, 2021, the Respondent sent an email communication to the Center stating: “Can I change the domain for another name or what would be the solution? delete it?”. The Center sent to the Parties a communication of Possible Settlement on July 23, 2021. On July 24, 2021, the Respondent again contacted the Center stating: “my client gave up the domain iqosec.com. The page was deleted and the domain to the company that was bought informed him to cancel it.” The Complainant informed the Center on August 6, 2021, that no settlement was possible, and thus, on August 6, 2021, the Center proceeded with case.
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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Another informal email was filed in Spanish with the Center on August 12, 2021.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 17, 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 BackgroundThe Complainant is a Swiss subsidiary of Philip Morris International, Inc., that participates in the tobacco industry.
The Complainant is the owner of several trademark registrations around the world, among others, the following:
Trademark
No. Registration
Jurisdiction
Date of Registration
IQOS
1218246
International Registration
July 10, 2014
IQOS
1338099
International Registration
November 22, 2016
The Respondent registered the disputed domain name on July 2, 2021, and it resolves to a website that operates an online store that offers the Complainant’s products, as well as a blog that promotes third party products.
5. Parties’ Contentions A. ComplainantThe Complainant argued the following:
That the Complainant is a subsidiary of Philip Morris International, Inc., and one of the leading international tobacco company, with products sold in over 180 countries.
That the Complainant is transforming its business from combustible cigarettes to Reduced Risk Products, one of which is called IQOS, an electronic heating device that uses tobacco sticks called HEETS.
That the products that bear the trademarks IQOS and HEETS are available in around 66 markets across the world.
That, after an investment of over USD 8.1 billion, the IQOS products have achieved considerable international success and reputation, with almost 19 million consumers worldwide.
That it owns several trademark registrations for IQOS in several jurisdictions.
That the disputed domain name is linked to an online shop allegedly selling and offering the Complainant’s products that bear the IQOS and HEETS trademarks.
That the website to which the disputed domain name resolves contains texts in Spanish and displays an address in Quito and Guayaquil, Ecuador, which clearly indicates that said website is directed to Ecuador.
That the Complainant’s IQOS system is not currently available in Ecuador. That, notwithstanding this fact, the disputed domain name is purporting to be an official retailer of the Complainant in Ecuador, by using the Complainant’s IQOS trademark, together with the geographical abbreviation for Ecuador, “ec”.
That the Respondent promotes an Instagram page using the username “Mr. IQOS”, which equally includes the Complainant’s registered IQOS trademark.
That the website to which the disputed domain name resolves used several of the Complainant’s official product images and marketing materials without the Complainant’s authorization, while at the same time made available a copyright notice at the bottom of the website claiming rights to the materials presented on said website, thereby strengthening the false impression of affiliation with the Complainant.
That the website to which the disputed domain name resolves does not acknowledge the Complainant to be the actual owner of the trademarks and copyrighted materials reproduced therein, thus leaving Internet users with the impression that said website is affiliated to the Complainant.
I. Identical or Confusingly SimilarThat the disputed domain name includes entirely the Complainant’s trademark IQOS, plus the geographical abbreviation for Ecuador “ec”.
That the addition of merely descriptive and geographical terms to a domain name is insufficient to avoid a finding of confusing similarity.
That the addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name constitutes a standard registration requirement. That it should therefore be disregarded when conducting the confusing similarity test.
That any Internet user, when coming across the disputed domain name, will reasonably expect to find the website commercially linked to the Complainant, and be subject to confusion; that this unlawful association is exacerbated by the use of the Complainant’s official product images without authorization.
II. Rights or Legitimate InterestsThat it has not authorized the Respondent to use the IQOS trademark.
That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name; that, on the contrary, the Respondent is trying to obtain an unfair commercial gain by misleadingly diverting consumers.
That the Respondent is using the official product images of the Complainant without its authorization, while displaying a copyright notice associated thereto, thus strengthening the false impression of affiliation with the Complainant.
That the disputed domain name resolves to a website that allegedly sells the Complainant’s products that bear the trademark IQOS.
That the legitimate products that bear the IQOS trademark are sold primarily through official or endorsed stores, and that, in this case, the consumers are misled into believing that the website to which the disputed domain name resolves is related to official or endorsed distributors of the Complainant.
That the illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its IQOS System in Ecuador. That the online shop made available by means of the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS System into the Ecuadorian market.
III. Registered and Used in Bad FaithThat it is evident from the use of the disputed domain name that the Respondent knew of the Complainant’s trademarks when registering the disputed domain name.
That the trademark IQOS corresponds to a purely imaginative term which is unique to the Complainant; that said trademark is not commonly used to refer to tobacco products or electronic devices; and that it is no coincidence that the Respondent chose the disputed domain name intending to create a misleading association with the Complainant.
That it is evident that the Respondent registered and used the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark, as to their source, affiliation, or endorsement.
That the fact that the Respondent conceals its identity using a privacy protection service may, in itself, constitute a factor indicating bad faith.
B. RespondentThe Respondent sent an informal communication to the Center on July 22, 2021, asking whether changing the name of the disputed domain name would be a solution, or whether the Respondent had to delete it.
On July 24, 2021, a new informal communication was sent by the Respondent to the Center, mentioning that his client had already given up the disputed domain name, that it had been deleted, and that the third-party who acquired the disputed domain name had instructed the Respondent to cancel it.
On August 12, 2021, another informal communication was sent to the Center, asking for a “.pdf” form.
The Respondent did not submit a Response that satisfies the formal and substantive requirements of the Policy and the Rules.
6. Discussion and FindingsIn accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Given the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).
A. Identical or Confusingly SimilarThe Complainant has proven to be the owner of registrations for the trademark IQOS throughout the world, including in Ecuador, where the Respondent seems to be located.
The disputed domain name
The incorporation of the geographical abbreviation “ec” for Ecuador does not prevent a finding of confusing similarity, because the Complainant’s trademark IQOS is recognizable in the disputed domain name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) (see also Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; InfoSpace.com, Inc. v. Hari Prakash,WIPO Case No. D2000-0076; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; and Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388).
The addition of the gTLD “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has asserted that there is no relationship between the Complainant and the Respondent, that it has not granted any authorization to the Respondent to use its trademark IQOS, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent did not contest these allegations.
As asserted by the Complainant, the products bearing the IQOS trademark are sold primarily through official or endorsed stores. Noting the composition of the disputed domain name and its use, the disputed domain name misleads the consumers into believing that the website to which the disputed domain name resolves is related to official or authorized distributors or resellers of the Complainant, which cannot be deemed as a bona fide offering of goods.
Moreover, the fact that the Complainant’s products are not available in Ecuador, strengthens the risk of confusion among Internet users, who might think that the Respondent is an official retailer of the Complainant in the Ecuadorian market.
The facts of this case do not pass the Oki Data test1. The website to which the disputed domain name resolves offers not only the Complainant’s goods, but also products of competitors, which are promoted in a blog comprised in said website. Such website does not display a disclaimer stating that it is not related to the Complainant (see section 2.8.1 of the WIPO Overview 3.0; see also Phiip Morris S.A. v. bprapan bpaetaa,WIPO Case No. D2020-3372; and Phiip Morris S.A. v. Rohan mubbahir Kahn,WIPO Case No. D2021-1314).
The website to which the disputed domain name resolves predominantly displays the Complainant’s IQOS trademark, as well as reproductions of images of the Complainant’s official products, which belong to the Complainant (with copyright notices purporting that the rights holder is the Respondent). This shows that the Respondent has attempted to impersonate the Complainant. In addition, the Panel notes that the composition of the disputed domain name (with added abbreviations such as “ec”, for Ecuador, where the Respondent has declared to have his domicile) carries a risk of implied affiliation, since Internet users may think that the website to which this disputed domain name resolves belongs to an official distributor or dealer of the Complainant in Ecuador (see sections 2.5.1, and 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, supra).
In light of the above, the Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
Therefore, the second element of the Policy has been fulfilled.
C. Registered and Used in Bad FaithAccording to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its web site or location.
Considering the intensive investments in advertising that the Complainant has undertaken, the reputation that its trademark IQOS enjoys internationally, and that said fanciful trademark does not correspond to a dictionary word, it is safe to infer that said trademark is highly distinctive.
The fact that the Respondent chose to register the disputed domain name, which resolves to a website that displays the trademark IQOS of the Complainant, makes available images belonging to the Complainant, and contains a blog where competing products are promoted, suggests that the Respondent knew the Complainant, its trademarks, and its business when registering the disputed domain name, and that the Respondent has targeted the Complainant (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747).
These facts also show that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating the impression among Internet users that said website is related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez,WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260).
According to the evidence submitted by the Complainant, the Respondent has used the disputed domain name in an attempt to impersonate the Complainant for commercial gain, which also constitutes bad faith under the Policy (see also Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, supra; andFriedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC,WIPO Case No. D2016-0800).
Therefore, the third element of the Policy has been met.
7. DecisionFor 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
Kiyoshi Tsuru
Sole Panelist
Date: October 6, 2021
1 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.