The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Protected Protected, Shield Whois, Sweden / Marina Triboi, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 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 December 17, 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 December 20, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 2, 2022. 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 group of companies affiliated to Philip Morris International Inc. (collectively, “PMI”), a multinational company that sells nicotine based products in approximately 180 countries. The Complainant holds registrations for the trademark IQOS in several countries, including, for example, IQOS (word), United States Trademark Registration No. 4,763,090, registered on June 30, 2015 in classes 9, 11, and 34, which it uses to market what it describes as “a precisely controlled heating device into which specially designed tobacco sticks under the brand names ‘IQOS’, ‘HeatSticks’ or ‘TEREA’ are inserted and heated to generate a flavourful nicotine-containing aerosol (collectively referred to as the ‘IQOS System’).”
The Disputed Domain Name
The Complainant cites trademark registrations for the mark IQOS including International Trademark Registration No. 1329691 registered on August 10, 2016 in classes 9, 11, and 34 and United States Trademark Registration No. 4,763,088, registered on June 30, 2015 for the device mark IQOS, as prima facie evidence of ownership.
The Complainant submits that its rights in the trademark IQOS trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the IQOS trademark, and that the addition of a hyphen and the word “glo”, or the addition the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to avoid a finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “the provider of the Website is not known to the Complainant, nor is it authorised to use the Complainant’s IQOS trademarks”, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant also submits that the Respondent “would be unable to avail itself of the safe harbor to be found in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001- 0903” that is in some circumstances available to bona fide resellers of genuine branded goods.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules. It submits that “the Respondent knew of the Complainant’s IQOS trademark when registering the Disputed Domain Name. The Respondent started offering the Complainant’s IQOS System immediately after registering the Disputed Domain Name”. On use, it submits that “the Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale third party products of other commercial origin. Such abusive use of the Complainant’s IQOS trademark for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith”.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the trademark IQOS in the United States and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the IQOS trademark, the Panel observes that the Disputed Domain Name comprises (a) the Complainant’s trademark IQOS, (b) followed by a hyphen, (c) followed by “glo”, and (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as part of a domain name is generally disregarded because it is viewed as a standard registration requirement. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “iqos-glo”.
It is also well-established that where a domain name incorporates a complainant’s distinctive trademark in its entirety, it is confusingly similar to that mark despite the substitution of a letter or addition of other terms (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345, section 1.8 of WIPO Overview 3.0). In British American Tobacco (Brands) Limited v. Aleksandr Danil’cev, Glo-expert,WIPO Case No. D2020-1489, the panel found that “glo” is a registered trademark (used by a competitor of the Complainant). This Panel finds, in line with numerous previous panels, that where a disputed domain name contains the trademark of a third party not joined in the proceeding, this does not prevent a finding of confusing similarity of the Disputed Domain Name (see section 1.12 of the WIPO Overview 3.0).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark or to sell its products and for those reasons, the Respondent is not making a bona fide offering of goods or services. The Complainant submits that “the fact that the Respondent is not only offering the Complainant’s products but also competing heated tobacco products and/or accessories of other known and unknown commercial origin is in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods”.
This Panel accepts the uncontested prima facie evidence that the Respondent is not an authorized reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website the Disputed Domain Name resolves to, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, the Respondent is not commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an illegitimate commercial use of the Disputed Domain Name by suggesting some association with the Complainant and misleading consumers who are seeking out the Complainant’s mark IQOS to opportunistically divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark IQOS when it registered the Disputed Domain Name (see Philip Morris Products S.A. v. Mohammad Bhutto,WIPO Case No. D2020-0022; Philip Morris Products S.A. v. 杨英子 (yingzi0412),WIPO Case No. D2020-2600; Philip Morris Products S.A. v. Маханьков Михаил Владимирович / Makhankov Mikhail,WIPO Case No. D2020-2793; Philip Morris Products S.A. v. Yvoone Ku,WIPO Case No. D2021-0458.
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name diverts to a webstore that unlawfully offers the Complainant’s IQOS System products and, possibly competitor products, for sale into the United States where they do not have the requisite FDA regulatory approvals to be offered for sale. This Panel finds the conduct is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence, and finds that the Respondent has taken the Complainant’s trademark IQOS and incorporated it in the Disputed Domain Name along with a hyphen and a third party trademark “glo”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 Disputed Domain Name
Nicholas Weston
Sole Panelist
Date: February 11, 2022