WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Shaun Tan

Case No. D2020-1040

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is Shaun Tan, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <myiqoseverything.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 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 May 7, 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 May 8, 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 May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on July 14, 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 is part of the group of companies affiliated to Philip Morris International Inc., an international tobacco company, with products sold in approximately 180 countries. The Complainant developed a new product, called IQOS, which is a 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. IQOS was launched by the Complainant in Japan in 2014. Currently, IQOS is available in cities in around 52 markets across the world.

The Complainant is the exclusive owner of registered trademarks consisting of the word “iqos” in various jurisdictions throughout the world, including the following:

- the International trademark No. 1218246 IQOS (word mark), registered as of July 10, 2014;

- the International trademark No. 1338099 (design mark), registered as of November 22, 2016;

- the International trademark No. 1329691 (design mark), registered as of August 10, 2016.

The disputed domain name was registered on April 16, 2020. The disputed domain name resolves to a website allegedly selling and offering the Complainant’s IQOS products, as well as competing third party accessories of other commercial origin.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the IQOS trademark of the Complainant. The disputed domain name identically adopts the Complainant’s IQOS trademark and the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity.

With regard to the second element of the UDRP, the Complainant argues that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant. The website at which the disputed domain name redirects is selling competing accessories of other commercial origin, which in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. The website at which the disputed domain name redirects prominently displays the IQOS trademark of the Complainant and uses the Complainant’s official product images and marketing materials without authorization. The consumers might falsely believe that the website under the disputed domain name belongs to an official distributor of the Complainant. Such use does not confer a right or legitimate interest on the Respondent.

In what concerns the third element of the UDRP, the Complainant contends that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name as the Respondent started offering the Complainant’s IQOS products immediately after registering the disputed domain name. Furthermore, the term “Iqos” is purely an imaginative term and unique to the Complainant. The Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark. The Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS products, 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. The Complainant also argues that the Respondent’s purported recent involvement in the bad faith registration and use of another domain name shows a pattern of bad faith conduct.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the IQOS trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “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”.

Here the disputed domain name wholly incorporates the Complainant’s IQOS trademark in addition to the words “my” and “everything”, that serve as descriptive terms. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. The Panel finds that the trademark of the Complainant is included in its entirety in the disputed domain name and that the words “my” and “everything” do not prevent a finding of confusing similarity. See for a similar finding, Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191; Philip Morris Products S.A. v. Shaun Tan, WIPO Case No. D2019-2661; Philip Morris Products S.A. v. Punyisa Sawatsut, Punyisa Sawatsut, WIPO Case No. D2020-1266.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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 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 3.0, which states: “[…] 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 the present case the Complainant has established a prima facie case that it holds rights over the trademark IQOS and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the disputed domain name resolves to an online retail shop reproducing the Complainant’s IQOS trademark and purportedly offering for sale the Complainant’s various products along with competitive products of other commercial origin. Such use does not confer in the Panel’s view rights or legitimate interests on the Respondent. See e.g. L’Oréal v. Dmitry Makukhin, WIPO Case No. D2016-0137. Also, the website to which the disputed domain name resolves uses official product images of the Complainant and claims copyright in such material. The Complainant denies extending an authorisation for this use. The Respondent has not rebutted these allegations and the Panel concludes that such use does not confer rights or legitimate interests on the Respondent.

Under certain circumstances, UDRP 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 (see WIPO Overview 3.0, section 2.8.1), if certain requirements are met.

As outlined in the “Oki Data test”, such requirements normally include the respondent actually be offering the goods or services at issue, the respondent using the site to sell only the trademarked goods or services, the website accurately and prominently disclosing the registrant’s relationship with the trademark holder. Also, the respondent must not try to “corner the market” in domain names that reflect the trademark. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In this case the website to which the disputed domain name resolves does not disclose the relationship or lack of relationship with the trademark owner and includes competitive products of other commercial origin. Therefore, the Panel considers that the above-mentioned criteria are not met in this case and the disputed domain name has not been used for a bona fide offering of goods in the meaning of the Policy.

Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, or the name “Iqos”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

Given that there is no contrary evidence from the Respondent the Panel concludes that the Complainant has proved this element of the Policy. The Respondent has no rights or legitimate interests in respect of the disputed domain name in the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

According to the unrebutted assertions of the Complainant, its IQOS trademark was widely used in commerce before the registration of the disputed domain name and it is internationally known. See Philip Morris Products S.A. v. Punyisa Sawatsut, Punyisa Sawatsut, supra. The term “iqos” is a fanciful term, purely imaginative, not being commonly used in the tobacco industry. See Philip Morris Products S.A. v. Shaun Tan, supra. The website associated to the disputed domain name purportedly offers for sale the goods of the Complainant and displays the IQOS trademark. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant and its trademark IQOS. See Philip Morris Products S.A. v. Rich Ardtea, WIPO Case No. D2020-0528.

As regards the use of the disputed domain name, from the evidence put forward by the Complainant and not rebutted by the Respondent, the disputed domain name directs Internet traffic to a website reproducing the Complainant’s IQOS trademark and purportedly offering for sale the Complainant’s various products along with competitive products of other commercial origin. In addition, the website at the disputed domain name includes product images of the Complainant without authorisation. Therefore, the Panel considers that the Respondent intentionally tried to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant’s IQOS trademark as to the source, sponsorship, affiliation of her website. For a similar finding, see Philip Morris Products S.A. v. Private Registration / Furkan Şengül, WIPO Case No. D2020-1039.

According to the unrebutted evidence put forward by the Complainant, the Respondent appears to have previously registered at least one domain name incorporating the Complainant’s IQOS trademark in bad faith, as held by another UDRP panel. The website to which that domain name redirected in that case was similar in content with the website to which the disputed domain name resolves. The Panel considers this is another indication of bad faith on the part of the Respondent.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <myiqoseverything.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: July 28, 2020