WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. /Tommy Chi

Case No. D2018-0843

1. The Parties

The Complainant is Philip Morris Products S.A of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama /Tommy Chi of Canada; Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <shop-iqos.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2018, 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 April 19, 2018 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 amendment to the Complaint on April 19, 2018.

The Center verified that the Complaint together with the amendment to 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 April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2018.

The Center appointed Richard Tan as the sole panelist in this matter on May 24, 2018. 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 a company which is part of the group of companies affiliated to a leading international tobacco company, with products sold in approximately 180 countries. Its products include smoke-free products consisting of controlled heating devices into which tobacco products are inserted and heated to generate nicotine-containing vapor.

It is the owner of the trademark IQOS registered in various countries including United States (“US”) Trademark No. 4763090 (word) registered on June 30, 2015; International Registration No. 1218246 (word) registered on July 10, 2014 designating Antigua and Barbuda, Bahrain, Bonaire, Saint Eustatius and Saba, Colombia, Curaçao, European Union, Georgia, Israel, India, Iceland, New Zealand, Sultanate of Oman, Philippines, Sint, TN (Tunisia), Turkey, Albania, Armenia, Bosnia and Herzegovina, Belarus, Cuba, Algeria, Egypt, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Republic of Moldova, Montenegro, the former Yugoslav Republic of Macedonia, Mongolia, Serbia, Ukraine, Viet Nam; US Trademark (device) No. 4763088 registered on June 30, 2015; US Trademark (device) No. 4763088 registered on June 30, 2015; and International Registration (device) No. 1329691 registered on August 10, 2016 designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, Republic of China, Colombia, Curaçao, Egypt, United States of America, the former Yugoslav Republic of Macedonia, the Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, Organisation Africaine de la Propriété Intellectuelle (OAPI), Republic of Korea, Republic of Moldavia, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Viet Nam.

The disputed domain name was registered on May 8, 2017 and resolves to a website selling products under the Complainant’s trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark as it incorporates the mark IQOS in its entirety with the mere addition of the descriptive word “shop”.

The Complainant further contends that 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 in relation to the disputed domain name. The Respondent is not an authorized reseller of the Complainant’s products and has no affiliation with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s website uses the Complainant’s official marketing material without authority and explicitly and falsely alleges the Respondent to be an authorized online reseller of the Complainant’s IQOS branded products. The website includes no information clarifying the Respondent’s relationship to the Complainant. Internet users are clearly misled into believing that there is a commercial relationship between the website and the Complainant where none exists. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest in the disputed domain name on the part of the Respondent.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving 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 is registered and is being used in bad faith.

A. Identical or Confusingly Similar

On the evidence adduced by the Complainant, the Panel finds that the Complainant has rights in its trademark IQOS.

It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

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. 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. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In this case, the disputed domain name incorporates the Complainant’s registered mark IQOS with the addition of the generic, descriptive term “shop” in front of the mark IQOS and separated by a hyphen.

It is also well established that where the relevant 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 section 1.8, WIPO Overview 3.0.

As the dominant feature of the disputed domain name consists of the Complainant’s mark, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and that the mere addition of the general descriptive term “shop” is insufficient to prevent a finding of confusing similarity.

With regard to the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name, the gTLD is viewed as a standard registration requirement and as such should be disregarded: see section 1.11.1, WIPO Overview 3.0.

The Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof is on a complainant to establish a lack of rights or legitimate interests on the part of the respondent, where a complainant is able to make out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production 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 of the Policy: see section 2.1, WIPO Overview 3.0.

The Respondent has not submitted a response to the Complainant’s contentions.

On the evidence, the Respondent’s website offers products bearing the Complainant’s trademark IQOS. The disputed domain name reproduces the IQOS trademark in its entirety and includes the descriptive term “shop”, which suggests an affiliation between the Respondent and its website and the Complainant and further, that the Respondent is authorized to sell the Complainant’s products as an online shop under a commercial relationship with the Complainant. The website also appears to use the Complainant’s official marketing material.

Generally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests an affiliation with the trademark owner or sponsorship or endorsement by the trademark owner. In assessing rights or legitimate interests on the part of a respondent, the website content may be taken into account, including whether the website makes clear to Internet users visiting the respondent’s website that it is not operated by the complainant. The website should not be misleading as to affiliation, source or sponsorship, and should not be a pretext for commercial gain such as where the respondent is attempting to ride on the reputation of the complainant’s marks.

Some panels have however recognized that resellers or distributors 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. In this case, the Respondent is not an authorized dealer. This is not however necessarily on its own dispositive because, in principle, it is not an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark.

In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which was a case involving an authorized dealer, the panel found that for a reseller to be acting bona fide within paragraph 4(c)(i), the offering must meet several minimum cumulative requirements, including:

(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.

In this case, the Respondent’s website did not, as the Complainant asserts, identify the operator of the website. It also did not identify the website’s relationship with the owner of the trademark. Indeed, there was no relationship of any kind with the Complainant. It was not even an authorized dealer or reseller.

The overall nature of the website and its content, which included the use of the Complainant’s official marketing material and without a disclaimer of any relationship with the Complainant, is in the Panel’s view capable of falsely representing to visitors to the website that the Respondent was an authorized online reseller of the Claimant’s products and in some way affiliated with the Complainant. A false representation of this kind could not give any rights or legitimate interests to the Respondent in relation to the disputed domain name.

Indeed, the deliberate choice of the disputed domain name for selling products bearing the trademark of the Complainant was likely designed to mislead Internet users into believing that the site was operated, endorsed by or affiliated with the Complainant. Such illegitimate use which intentionally and unfairly trades on the reputation and goodwill of a trademark owner cannot constitute a bona fide offering of goods or services.

The Panel finds that the Complainant has made out a prima facie case. The evidentiary burden shifts to the Respondent to show that it has rights or legitimate interests to the disputed domain name. The Respondent has not provided any evidence to that effect or that would otherwise demonstrate any rights or legitimate interests in the disputed domain name.

In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.

UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Respondent has no legitimate interests in the disputed domain name.

As noted above, the Respondent must have deliberately chosen and used the confusingly similar disputed domain name primarily to ride upon and take unfair advantage of the Complainant’s reputation and goodwill in its marks by intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, this would constitute bad faith registration and use.

In all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of 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 <shop-iqos.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Date: June 6, 2018