WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. fromko

Case No. D2018-2889

1. The Parties

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

The Respondent is fromko of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <iqosph.com> is registered with Whois Networks Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 21, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center notified the Parties in both English and Korean that the language of the registrant agreement for the disputed domain name is Korean. The Complainant filed an amendment to the Complaint on December 21, 2018, including a request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 4, 2019. 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 following factual information is derived from the Complaint and supporting materials submitted by the Complainant:

The Complainant, Philip Morris Products S.A., is a company which is part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries.

One of the Reduced Risk Products (RRP) developed and sold by PMI is branded IQOS. IQOS is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” and “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS Products). For both brands IQOS and HEETS, the Complainant owns a large portfolio of well-known trademarks in over 50 jurisdictions (e.g., International Registration no. 1218246, registered on July 10, 2014) including, but not limited to the Philippines and the Republic of Korea. To date, the IQOS Products have been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

The disputed domain name <iqosph.com> was registered on May 8, 2018 and resolves to an online shop offering the Complainant’s IQOS and HEETS branded products as well as offering competing products of other commercial origin. The Respondent claims to be a Korean wholesaler and indicates an address in Manila, Philippines as its address. The website is provided in English and is using a high number of the Complainant’s copyright protected official product images and marketing materials.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the IQOS trademark; ii) there is no evidence of 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; iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Iqos”.

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on its website or location. The Complainant stresses that the Respondent is not only using the Complainant’s IQOS trademark for purposes of promoting not only the Complainant’s IQOS and HEETS branded goods, but also competing products of other commercial origin. The Complainant argues the fact that competing products are falsely presented under the Complainant’s trademark is clear evidence of bad faith.

Lastly, the Complainant contends that the Respondent’s concealment of its identity also suggests bad faith. See TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. However, notwithstanding the actual language of the registration agreement, the Complainant requested that English be the language of the proceeding. Accordingly, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or 3) submit a request for English to be the language of the administrative proceedings, which includes arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Complainant submitted a request for English to be the language of the administrative proceedings.

The Panel notes that the Complainant was unable to determine that the Respondent’s registration agreement was in Korean given that that the concerned Registrar is offering a registration agreement in English and the Respondent chose to conceal its identity in the WhoIs information. The Panel also notes that the website at the disputed domain name is run in English, which suggests that the Respondent is able to communicate in English.

In these circumstances, the Panel finds that English will be the language of the proceeding.

B. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s trademark IQOS in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” Moreover, the generic Top-Level Domain, such as “.com”, is normally disregarded during the first element confusing similarity test. See section 1.11 of WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the disputed domain name, “ph” is attached to the Complainant’s trademark IQOS. However, given that the term “ph” is often used as a generic country code describing the Philippines, the location where relevant consumers are expected to find the Respondent, it does not eliminate the similarity between the Complainant’s trademark and the disputed domain name. See section 1.8 of WIPO Overview 3.0; see also, “the mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names” JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486. Moreover, it is highly likely that the Internet user will clearly recognize the IQOS marks and come to the conclusion that the Respondent’s website is connected with the Complainant.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Section 2.1 of WIPO Overview 3.0 provides that “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.”

After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademark to the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the IQOS Marks. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant’s mark. F. Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.

Furthermore, the Panel agrees that there is no evidence of 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. The use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy, only if the following conditions are satisfied: 1) the Respondent must use the site to sell only the trademarked goods; 2) the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and 3) the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent failed to satisfy all of the requirements: 1) On its website, the Respondent is selling third-party competing products along with the Complainant’s products; 2) The Respondent’s website includes no information clarifying the Respondent’s relationship to the Complainant. By using the Complainant’s registered mark in the domain and selling its products, the Respondent is suggesting affiliation with the trademark owner when there is in fact no relationship; 3) IQOS products are primarily distributed through official stores, in countries where the Products are available. In that case, relevant consumers maybe mislead by the disputed domain name as to the affiliation.

In addition, it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name or the name “Iqos”.

Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

By failing to respond to the Complainant’s position, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.

In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Respondent is not only using the IQOS trademark in the disputed domain name, but also presenting the Complainant’s IQOS logo on the top of its website, suggesting that the website under the disputed domain name belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant when it is not. The Respondent’s intentions to misrepresent the affiliation to the Complainant are further supported by the Respondent’s use of the Complainant’s official marketing material and product images.

Furthermore, the Respondent is using the Complainant’s IQOS trademark for purposes of offering for sale competing products of other commercial origin, falsely presented under the Complainant’s IQOS trademark. See “The Respondent is receiving commercial gain from his use of the Disputed Domain Name, including by selling third party products, some of which compete with those offered by the Complainant. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.” Renata SA Corporation v. Morteza khaji, WIPO Case No. DIR2018-0017.

Lastly, it is established that a deliberate concealment of identity and contact information may be considered as a further evidence of bad faith. See TTT Moneycorp Limited. v. Diverse Communications, supra. In this case, the Respondent chose to hide its identity when registering the disputed domain name with the Registrar.

Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

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 <iqosph.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: February 14, 2019