The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Endi Elua Souza Ouvidio, iqcigarrets, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 23, 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 tobacco and smoke-free products company. It markets a controlled heating device under the brand name IQOS, into which specially designed tobacco products marketed under different brand names, including HEETS, are inserted and heated to generate a nicotine-containing aerosol. The Complainant owns multiple trademark registrations in multiple jurisdictions, including:
- International trademark registration number 1218246 for IQOS, registered on July 10, 2014, designating multiple jurisdictions, specifying goods in classes 9, 11 and 34, including electronic vaporizers;
- International trademark registration number 1329691 for a semi-figurative IQOS mark claimed in colors, registered on August 10, 2016, designating multiple jurisdictions, specifying goods in classes 9, 11 and 34, including electronic vaporizers;
- Brazilian trademark registration number 907695965 for IQOS, registered on November 8, 2016, specifying goods in class 34;
- Brazilian trademark registration number 911470492 for a semi-figurative IQOS mark claimed in colors, registered on July 3, 2018, specifying goods in class 34; and
- European Union trademark registration number 018226787 for IQ, registered on August 5, 2020, specifying goods in classes 9 and 34.
The above trademark registrations remain current.
The Respondent is located in Brazil. The disputed domain name was created on June 26, 2019 and resolves to a website titled “IQcigarrets” that offers for sale e-cigarette products, including IQOS, HEETS and competing products. In the website title, the letter “I” consists of an image of an e-cigarette device while the “Q” is the stylized Q in the Complainant’s semi-figurative IQOS mark, although in black not colors. A banner on the website reads “Ready delivery in Brazil”. Prices are quoted in BRL. When the website is open in an Internet browser, the words “Comprar HEETS e IQOS no Brasil” (which may be translated as “Buy HEETS and IQOS in Brazil”) appear in the address bar.
The Registrar confirmed that the language of the Registration Agreement is English.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to multiple trademarks registered by the Complainant, including IQOS, IQ and the figurative mark featuring a stylized letter Q.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name adapting its trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The associated website is not only offering the Complainant’s trademarked goods but also competing products of other commercial origin. Furthermore, the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQ and IQOS trademarks.
The disputed domain name was registered and is being used in bad faith. The Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the IQOS marks and the IQ mark.
The disputed domain name wholly incorporates the IQ mark as its initial element. Although it adds the misspelt word “cigarrets”, the IQ trademark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Given the timing of the registration of this mark (discussed in Section 6C below), the Panel will also compare the disputed domain name with another of the Complainant’s marks.
The disputed domain name incorporates the first half of the IQOS marks (the letters “IQ”) as its initial element. It also adds the misspelt word “cigarrets” but the first half of the IQOS marks remains clearly recognizable within the disputed domain name. The Panel notes that the website associated with the disputed domain name offers for sale the Complainant’s IQOS products, which provides confirmation that the Respondent, through the disputed domain name, is seeking to target the Complainant’s IQOS marks. See WIPO Overview 3.0, section 1.15.
The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain name and the Complainant’s marks. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain name adapting its trademarks.
As regards the first circumstance set out above, the disputed domain name resolves to a website offering for sale the Complainant’s IQOS and HEETS products. The website also offers for sale the products of a competitor of the Complainant and it displays no disclaimer that the Respondent has no relationship with the Complainant. Regardless of whether the products offered for sale are genuine or not, these circumstances indicate that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As regards the second circumstance set out above, the Respondent’s registrant name is listed in the Registrar’s WhoIs database as “Endi Elua Souza Ouvidio”, not the disputed domain name. Although the registrant organization name is listed in the Registrar’s WhoIs database as “iqcigarrets”, there is no evidence that the Respondent has been commonly known by that name.
As regards the third circumstance set out above, the disputed domain name resolves to a website offering goods for sale. That is not a legitimate noncommercial or fair use of the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not file any substantive response to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:
(iv) by using the [disputed] domain name, [the 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] web site or location or of a product or service on [the respondent’s] website or location.
As regards registration, the disputed domain name was registered on June 26, 2019, which was after the registration of the Complainant’s IQOS marks, including in Brazil, where the Respondent is located (but before the registration of its IQ mark). The disputed domain name includes the misspelt word “cigarrets” which indicates an awareness of the nature of the Complainant’s products as e-cigarettes. The website associated with the disputed domain name repeatedly displays the IQOS mark; its title also prominently displays the letter “Q” in the Complainant’s semi-figurative IQOS mark but in black not colors. The website offers the Complainant’s IQOS products for sale, among others. These circumstances all give the Panel reason to find that the Respondent targeted the Complainant’s IQOS marks when it registered the disputed domain name.
As regards use, the disputed domain name resolves to a website offering for sale the Complainant’s IQOS and HEETS products, as well as a competitor’s products. Given the findings in Section 6B above, the Panel finds 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 products offered for sale on that website within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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
Matthew Kennedy
Sole Panelist
Date: January 6, 2022