Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondent is Watcharin Bunthong, Thailand.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 Complainant on September 22. 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 27, 2021.
The Center verified that 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 Respondent of Complaint, and the proceedings commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November 16, 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 BackgroundComplainant is Philip Morris Products S.A., a company part of the group Philip Morris International Inc. (jointly referred to as “PMI”). PMI is one of the leading international tobacco and smoke-free products companies, with products sold in approximately 180 countries. PMI’s trademark portfolio includes brands as MARLBORO (outside of the United States of America and Canada), the world’s number one cigarette seller brand since 1972. Further information about PMI and its business can be found at “www.pmi.com”.
Complainant is currently transforming its business from standard cigarettes to Reduced Risk Products (or “RRPs”), which are products that offer less risk of harm to smokers. Complainant has developed a number of RRP products, including the IQOS, which is “a precisely controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a flavourful nicotine-containing aerosol”.
The IQOS has achieved considerable international success and reputation, so that over 19 million consumers use the IQOS worldwide. Up to this date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores,websites, and selected authorized distributors and retailers.
In order to protect its investments and rights over its innovative smoke-free products, Complainant owns a wide portfolio of registered trademarks for the sign IQOS in a variety of jurisdictions.
Below are some examples of Complainant’s trademark registrations:
- Thai Registration for IQOS (wordmark) No. TM416024 registered on May 14, 2014.
- International Registration for IQOS (wordmark) No. 1218246 registered on July 10, 2014he appropriate way regarding UN terminology.
- International Registration for (composed trademark) No. 1461017 registered on January 18, 2019.
Moreover, it is important to highlight that the disputed domain name
Complainant pleads that the disputed domain name
In this regard, Complainant affirms that any Internet user when visiting a website provided under the disputed domain name
Thus, Complainant alleges that the disputed domain name would be clearly intended to imitate its business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that, as far as it is aware, Respondent does not have any rights or legitimate interests in respect of the trademarks IQOS, nor is widely known by the disputed domain name, authorized, or licensed to use such trademark as a domain name.
In this sense, Complainant states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, Respondent would have demonstrated a clear intent to obtain an unfair commercial gain by misleading consumers to think that its website is anyhow associated to Complainant.
Complainant mentions that a reseller or distributor can make a bona fide offering of goods or services and thus have a legitimate interest in the disputed domain name only if certain requirements are met. However, in this case, Respondent would not have complied with those requirements.
Therefore, Complainant states that no bona fide or legitimate use of the disputed domain name could be reasonably claimed by Respondent, so paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.
At last, Complainant states that the disputed domain name
In this regard, Complainant affirms that it is very likely that Respondent was aware of Complainant’s rights and well-known reputation when registering the disputed domain name, since Respondent started offering Complainant’s IQOS products through it immediately after the registration. Moreover, the term “iqos” is imaginative term and unique to Complainant, meaning that the term is not commonly used to refer to tobacco products or electronic devices. This way, it would be a huge coincidence that Respondent had chosen the disputed domain name without the sole intention of causing a misleading association with Complainant.
Complainant also notes that the disputed domain name resolves to an active website where Respondent impersonates Complainant by using official images of IQOS product without Complainant’s authorization and claiming copyright of those images, thereby strengthening the false impression of an affiliation with Complainant.
ln conclusion, Complainant alleges that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark IQOS as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
A. Identical or Confusingly SimilarComplainant has duly proven that it owns several registrations around the world for the trademark IQOS that predate Respondent’s registration of the disputed domain name
The Panel finds that the disputed domain name incorporates the entirety of Complainant’s trademark IQOS with the sole addition of the generic adjective “grand”, which does not prevent Complainant’s trademark from being recognizable in the disputed domain name. Thus, the existence of the term “grand” in the disputed domain name does not avoid a finding of confusing similarity with Complainant’s trademark IQOS.
The Panel then finds that the disputed domain name is confusingly similar to Complainant’s trademark and so the requirements of the first element of paragraph 4(a) of the Policy are satisfied.
B. Rights or Legitimate InterestsThe consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, 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.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name
Despite, the Panel reserves the right to note that Respondent’s use of the disputed domain incorporating Complainant’s trademark IQOS to sell what seems to be IQOS legitimate products does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
According to section 2.8 of the WIPO Overview 3.0, “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”.
To prove its legitimate interests, a respondent in those specific conditions must meet the following cumulative requirements:
(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 Panel notes that Respondent does not comply with the requirements (iii) and (iv).
There is no information on Respondent’s website disclosing the identity of the provider or its real relationship with Complainant. The fact that Respondent uses Complainant’s trademark and official images claiming copyrights perpetuates the impression of a regular and existing commercial relationship between both parties, which does not exist, as Complainant has already clarified.
In addition, the Panel believes that the fact that Complainant’s consumers are led to falsely believe that Respondent’s website is an official/endorsed distributor of IQOS products divert Complainant’s sales in Respondent’s benefit in an unlawful way.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
The Panel finds that is duly demonstrated that Respondent was well aware of Complainant’s rights to the trademark IQOS at the time of registration of the disputed domain name and had intended to impersonate Complainant or at least to create an undue association with Complainant when registering it, since: (i) Respondent uses official images of Complainant’s products in its website with no authorization and claims copyrights over them; (ii) the term IQOS is not commonly used to refer to tobacco products or electronic devices, so Respondent’s choice of the term IQOS to compose the disputed domain name shows Respondent’s attempt to create a likelihood of confusion with Complainant’s business; and (iii) the disputed domain name
The Panel notes that there has already been a substantial number of different UDRP disputes filed by Complainant against other parties, also related to the use of trademark IQOS as part of other domain names. A case with a close factual resemblance to the current one was Philip Morris Products S.A. v. Shen Zhen Shi Yang Cheng Biao Shi She Ji You Xian Gong Si,WIPO Case No. D2018-0683 in which the disputed domain name was
Thus, it is clear for the Panel that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark IQOS as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
As such, the Panel states that Complainant has satisfied 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 disputed domain name
Gabriel F. Leonardos
Sole Panelist
Date: November 29, 2021