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 / Liu Xinke, Australia / IQOSPOST, Hong Kong, China / Japan Tokyo Trading Pty Limited, Japan.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 August 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 7, 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 part of the Philip Morris International Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world.
One of its products is the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS or HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 66 markets across the world through official IQOS stores and websites, and selected authorized distributors and retailers.
The Complainant owns among others the following trademarks (Annexes 6 and 7 to the Complaint):
- International registration No. 1338099 for the device mark IQOS, registered on November 22, 2016, in class 35; and
- International registration No. 1326410 for the word mark HEETS, registered on July 19, 2016, in classes 9, 11, and 34.
The disputed domain names
The Complainant claims to have developed the IQOS system, first launched in Nagoya, Japan in 2014.
Asserting to have invested over USD 8.1 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having 19.1 million relevant consumers worldwide.
According to the Complainant, the disputed domain names are under common control given that: (i) the disputed domain names are similar in composition by virtue of their inclusion of trademarks belonging to the Complainant, or marks highly similar / phonetically almost identical thereto; (ii) the Registrant for the disputed domain names is the same; (iii) two of the three disputed domain names were registered on the same date; (iv) the respective websites associated with the disputed domain names contain highly similar, if not identical substantive contents; (v) each of the respective websites associated with the disputed domain names are named as IQOSPOST; and (vi) each of the respective websites associated with the disputed domain names contain the same contact information (i.e., email address).
The Complainant further states that the Respondent is not known nor is in any way related to any company belonging to PMI and is not authorized to use the IQOS and/or HEETS trademarks, or any phonetically similar mark therewith.
Also according to the Complainant, the use of the disputed domain names in connection with an online shop targeting the Japanese market and clearly purporting to be an official online retailer of the Complainant’s IQOS system by using the Complainant’s IQOS trademark as well as the registered logo, further using a number of the Complainant’s official product images, without the Complainant’s authorization, characterizes an attempt to pass off as an official online retailer of the Complainant’s products in Japan.
The Complainant further states that the unremarkable disclaimer positioned at the bottom of the websites is ambiguous and inaccurate, not correctly identifying the lack of relationship between the Complainant and the Respondent.
Under the Complainant’s view, the disputed domain name
Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:
(i) it has not licensed or otherwise permitted the Respondents to use any of its trademarks or to register a domain name incorporating its IQOS and/or HEETS trademarks or a domain name which will be associated with these trademarks;
(ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant;
(iii) the Respondent is not an authorized reseller of the Complainant’s IQOS system, being Internet users / relevant consumers misled regarding the relationship between the disputed domain names and the Complainant;
(iv) the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 are not met, given that the disclaimer offered at the bottom of the websites is not presented in a clear and sufficiently prominent manner, not effectively disclosing the relationship existing between the Respondent and the Complainant; and
(v) the disputed domain names and the content of the websites to which they resolve suggest at least an affiliation with the Complainant which in fact does not exist.
As to the registration and use of the disputed domain names in bad faith, the Complainant states that:
(i) the Respondent knew of the Complainant’s trademarks when registering the disputed domain names;
(ii) the IQOS and HEETS marks are not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain names without intention of invoking a misleading association with the Complainant;
(iii) the purpose of the Respondent’s registration of the disputed domain names was to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s registered IQOS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its websites;
(iv) by reproducing the Complainant’s registered trademarks in the disputed domain names and in the title of the websites, the Respondent’s websites suggest the Complainant or an affiliated dealer of the Complainant as the source of the websites which is not the case; being this suggestion also supported by the Respondents’ use of the Complainant’s official product images; and
(v) the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indication of bad faith as recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.
A. Consolidation of Multiple RespondentsThe Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5A above.
Section 4.11.2 of the WIPO Overview 3.0 establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have these disputed domain names dealt with at the same procedure, given that: (a) the Registrant for the disputed domain names is the same; (b) two of the three disputed domain names were registered on the same date; (c) the respective websites associated with the disputed domain names contain highly similar, if not identical substantive contents; (d) each of the respective websites associated with the disputed domain names are named as IQOSPOST and contain the same contact information (i.e., email address); (e) the disputed domain names share a similar naming pattern; and (f) no objection was made by the Respondent regarding consolidation.
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.
B. Identical or Confusingly SimilarThe Complainant has established rights over the HEETS and IQOS trademarks.
The disputed domain names
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain names and neither is an authorized reseller of the Complainant’s IQOS system, nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS or HEETS trademarks.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain names in connection with an online shop reproducing the Complainant’s IQOS trademark, together with the unauthorized reproduction of the Complainant’s official marketing product images, clearly suggests at least an affiliation with the Complainant which in fact does not exist.
This inference is further corroborated by the confusingly written disclaimer, which placed at the bottom of the webpage, and which does not effectively disclose the lack of relationship between the Respondent and the Complainant.
Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the dispute domain names in these circumstances.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
D. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the IQOS and HEETS trademarks or a confusingly similar approximation thereof in the disputed domain names, as well as the online shop that is available at the websites relating to the disputed domain names, together with the unauthorized reproduction of the Complainant’s official product images and inaccurate disclaimer, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names.
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 names
Wilson Pinheiro Jabur
Sole Panelist
Date: October 21, 2021