The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC, United States of America / ?? ?, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2020, 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 January 17, 2020 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 January 17, 2020. 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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020. The Center appointed Jonathan Agmon as the sole panelist in this matter on February 26, 2020. 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 Background The Complainant, Philip Morris Products S.A., is part of a corporate group affiliated to Philip Morris International, Inc. (“PMI”). PMI is a tobacco company, with its products being sold in approximately 180 countries around the world. PMI developed and distributes a product under the trademark IQOS, which is a controlled heating device in which specially designed tobacco sticks, called “Heets” and “HeatSticks”, are inserted and heated to create a tobacco vapor. The IQOS system also consists of an IQOS Pocket Charger, which is designed to charge the IQOS Holder (hereinafter collectively referred to as the “IQOS Products”). The IQOS Products were first launched by PMI in Japan in 2014 and are currently sold in around 51 countries. The IQOS Products are almost exclusively sold and distributed through PMI’s official IQOS stores and websites, and selected authorized distributors and retailers. The Complainant is the owner of trademarks for the mark IQOS, including: - IQOS (stylized) (Registration No. 01845937) registered in Taiwan Province of China on June 1, 2017; - IQOS (Registration No. 01921980) registered in Taiwan Province of China on June 16, 2018; and - IQOS (stylized) (Registration No. 01927293) registered in Taiwan Province of China on July 16, 2018. The disputed domain name The Complainant’s contentions include the following: The Complainant argues that the disputed domain name is confusingly similar to the IQOS mark on the basis that the disputed domain name wholly incorporates the IQOS mark and only differs from the IQOS mark by the addition of the term “tw”, which is the geographical term for Taiwan. The Complainant asserts that it has rights in the IQOS mark through its numerous trademark registrations and that the Respondent’s use of the IQOS mark in the disputed domain name and website would mislead Internet users to believe that the Respondent is affiliated with the Complainant. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant nor did the Complainant license or authorize the Respondent to use the IQOS mark. The Complainant further argues that the disputed domain name was registered in bad faith as the Respondent should have known of the Complainant’s IQOS mark at the time of registration of the disputed domain name. The Complainant also asserts that the disputed domain name is being used in bad faith as the Respondent is using 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 mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant has provided evidence of its various trademark registrations for the IQOS mark, both in standard character as well as stylized, in numerous jurisdictions. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name It is well-established where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu Luca,WIPO Case No. D2016-2582). Thus, in the present case, the addition of the hyphen or the term “tw” does not avoid confusing similarity with the Complainant’s IQOS mark. It is also established that the addition of a Top-Level Domain (“TLD”) to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the ccTLD “.co” is without significance and does not prevent a finding of confusing similarity in the present case. In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns numerous trademark registrations before the disputed domain name was registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s IQOS mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the publicly available WhoIs database are partially redacted. Although the details of the registrant on the publicly available WhoIs record are partially redacted, the Registrar has confirmed that the disputed domain name is registered under the Respondent, which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3). The Complainant argues that the Respondent is not engaging in a bona fide offering of goods and services and has submitted evidence showing that the disputed domain name resolves to a webpage that purportedly sells IQOS Products in Taiwan Province of China under the Complainant’s trademark when, in fact, the Complainant does not currently offer for sale its IQOS Products in Taiwan Province of China. The Complainant has asserted that the Respondent is not affiliated with the Complainant. The Respondent is also using what the Complainant identified as product images and marketing material belonging to the Complainant, on the webpage that the disputed domain name resolves to. By engaging in such acts, the Respondent is free riding on the Complainant’s reputation and goodwill to mislead unsuspecting Internet users to the disputed domain name’s webpage and creating a false impression that the Respondent is affiliated with and an authorized distributor or reseller of the Complainant when the Complainant’s IQOS products are mainly distributed through official stores. There is also no information on the Respondent’s websites clarifying the Respondent’s relationship (or lack thereof) to the Complainant (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Further, previous UDRP panels have held that use of domain names for illegal activities of this nature cannot confer rights or legitimate interests on a respondent. See Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein,WIPO Case No. D2015-1050; Karen Millen Fashions Limited v. Belle Kerry,WIPO Case No. D2012-0436; WIPO Overview 3.0, section 2.13.1. The Panel therefore finds that these acts by the Respondent do not amount to legitimate noncommercial use or fair use of the disputed domain name. In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence that the disputed domain name was created after the IQOS mark was registered. The Complainant’s evidence has shown that the IQOS mark has been registered in Taiwan Province of China from 2017, and these registrations were active at the time the Respondent registered the disputed domain name in 2019. The Complainant has also showed evidence that the Complainant has been selling the IQOS Products in 180 countries around the world. Therefore, the Panel draws the inference that the Respondent knew or should have known about the Complainant’s IQOS mark. Further, it is the Complainant’s evidence that the IQOS mark is a purely imaginative term unique to the Complainant which has no inherent meaning. The Panel therefore finds it inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademarks and intention of benefiting from confusion with such trademarks. (See Leite’s Culinaria, Inc. v. Gary Cieara,WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2.) The Complainant has also provided evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent is selling what are likely counterfeit goods of the Complainant on the website under the disputed domain name and using the Complainant’s trademarks on such goods and on the website as the Complainant has stated that the Complainant does not currently offer its IQOS Products for sale in Taiwan Province of China. This demonstrates intent on the Respondent’s part to specifically target Internet users in the Taiwan Province of China market who wish to buy goods from the Complainant. Internet users seeking to purchase goods under the Complainant’s trademark would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists, and there is nothing on the Respondent’s website that would clarify that the Respondent is not affiliated with or endorsed by the Complainant. Taking these into consideration, the Panel finds that under the particular circumstances of this case, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy. Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s IQOS mark, the Respondent’s use of the disputed domain name, the fact that no Response was submitted by the Respondent, and the fact that the details of the Respondent are hidden, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision For 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 Jonathan Agmon
Sole Panelist
Date: March 10, 2020
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