The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Perfect Privacy, LLC, United States of America / Emmy Candy, Thailand.
2. The Domain Name and RegistrarThe disputed domain name,
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 30, 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 amendment to the Complaint on August 31, 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 4, 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.
The Respondent used a privacy service when registering the Domain Name. The Complaint named the privacy service as the Respondent. The underlying registrant’s identity was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to file an amendment to the Complaint followed on from that disclosure. In response to that invitation the Complainant added the underlying registrant as an additional respondent to the Complaint. For the purposes of this decision the Panel treats the underlying registrant as the Respondent and all references herein to the “Respondent” are references to Emma Candy.
4. Factual BackgroundThe Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes, the group of companies of which the Complainant forms part has since 2014 included the production and sale of non-combustible alternatives, which it markets under inter alia the trademarks IQOS and HEETS.
The Complainant is the registered proprietor of numerous trademark registrations covering these trademarks. For present purposes it is only necessary to detail four of those registrations, all four of which are for smoking-related goods in one or more of classes 9, 11, and 34, namely:
Thailand Registration No. 416024 IQOS (word) registered on May 14, 2014.
International Registration No. 1218246 IQOS (word) registered on July 10, 2014. Thailand, the Respondent’s home jurisdiction, is designated as one of the countries covered
Thailand Registration No. 181105062 HEETS (figurative) registered on July 25, 2016.
International Registration No. 1461017 IQOS (figurative) registered on January 18, 2019. Thailand, the Respondent’s home jurisdiction, is designated as one of the countries covered
The Domain Name was registered on August 9, 2021, and is connected to a website offering for sale what appear to be the Complainant’s products along with competing brands such as Relx Zero, Blueberry Ice Tobacco, and KS Kurve Kardinal sticks, as well as whisky and wine. The website is prominently in Thai language and has a message on the home page headed “IQOS MARL HEETS RELX KS IFLEX”. The prices quoted on the website are in Thailand’s currency baht.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its IQOS registered trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. GeneralAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly SimilarThe Domain Name comprises the word “iqos”, followed by “candy”, and the “.com” generic Top-Level Domain identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s IQOS trademark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if proved to the satisfaction of the Panel, shall demonstrate a registrant’s rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. These circumstances are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Of the above the only potentially applicable circumstance is (i). The Respondent is using the Domain Name in relation to an offering of goods, but is it a bona fide offering?
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of that contention the Complainant asserts that it has no connection with the Respondent and has granted the Respondent no permission to use its trademarks; yet the Respondent’s website makes liberal use of those trademarks. Moreover, the Complainant asserts that it does not sell its IQOS HEETS products in Thailand.
The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the IQOS and HEETS trademarks in this or any other way. However, there are circumstances under which the unauthorized use of a third party’s trademark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the Respondent is using the domain name to connect to a website selling the goods of the Complainant.
The issue is addressed in section 2.8.1 of WIPO Overview 3.0:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’ [a test derived from the decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
The Domain Name fails the Oki Data test in at least one respect. The Respondent’s website is not devoted exclusively to IQOS products. As indicated in section 4 above it also promotes the sale of smoking-related products competing with those of the Complainant and, indeed, whisky and wine having no connection with the Complainant.
The Complainant also contends that the Domain Name fails the test on the basis that it does not accurately and prominently disclose the registrant’s relationship with the trademark holder. The Panel accepts that this is almost certainly true. Certainly there is nothing in English to indicate what the Respondent’s relationship is with the Complainant, but the website is a Thai language website, which has not been translated, and given the Panel’s finding that the Domain Name has failed the Oki Data test under (ii) above, it is unnecessary for the Panel to come to a concluded view on the matter.
The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. The Respondent has not provided an answer.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any one of which, if found by the Panel to be present, shall be evidence of registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The Panel is not persuaded that any of those circumstances is precisely on point.
There is no suggestion that the Respondent registered the Domain Name for the purpose of selling it at a profit (paragraph 4(b)(i) of the Policy). There is nothing to suggest that the Respondent registered the Domain Name to prevent the Complainant from acquiring it (paragraph 4(b)(ii) of the Policy). While the Respondent’s use of the Domain Name may be regarded by the Complainant as disruptive, it seems clear to the Panel that the Respondent’s primary aim has been to derive a profit from sales of product (including the Complainant’s products) through its website, not to disrupt the Complainant’s business (paragraph 4(b)(iii) of the Policy).
As to the circumstance covered by paragraph 4(b)(iv) of the Policy, the Panel accepts that this is potentially relevant in that the Respondent will certainly have incorporated the IQOS trademark into the Domain Name to attract Internet users to the website, but whether the Respondent has created “a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [her] website or location or of a product or service on [her] website or location” the Panel is unsure.
However, the list of circumstances set out in paragraph 4(b) of the Policy is expressly non-exhaustive. In the view of the Panel, what the Respondent has done by using the Complainant’s IQOS trademark in the Domain Name has been to lure in Internet users to her website, Internet users attracted by the IQOS trademark, and then expose to the view of visitors to the website products having no connection whatsoever with the Complainant, including products competing with the Complainant’s products. In so doing, in the view of the Panel, the Respondent has been acting in bad faith.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Tony Willoughby
Sole Panelist
Date: October 14, 2021