The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama. / ILLYA TARYANIK, United States of America.
The disputed domain name <iqossales.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019. On May 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 29, 2019, 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 May 30, 2019.
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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 27, 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.
The Complainant is part of Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in approximately 180 countries. PMI has developed a number of products, such as IQOS. IQOS 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 flavorful nicotine-containing aerosol. The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained 17.3% share of the market in Japan. Today the IQOS System is available in key cities in around 44 markets across the world, and it has approximately 7.3 million consumers worldwide. It is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant has trademark registrations in IQOS relating to its products, such as International Registration No. 1329691 registered on August 10, 2016 and International Registration No. 1218246 registered on July 10, 2014. The registrations designate a multitude of countries.
According to the Registrar, the Domain Name was registered on August 23, 2018. At the time of filing the Complaint, the Domain Name redirected to a website allegedly offering the Complainant’s IQOS System. At the time of drafting the Decision, the Domain Name resolved to a holding webpage hosted by the Registrar.
The Complainant has registered trademark rights in IQOS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name adopts the Complainant’s trademarks. The addition of “sales” is insufficient to avoid a finding of confusing similarity under the first element of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. The Domain Name redirects to a website that does not meet the requirements for a bona fide offering of goods. The website presents the Complainant’s registered trademark, and uses the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in this material. The website includes no information regarding the identity of the provider of the website. The disclaimer offered at the bottom of the Website is not presented in a clear and sufficiently prominent manner. it remains unclear what the indication “unofficial IQOS online store” means and whether the website might still be endorsed by the Complainant.
The Complainant argues that the Respondent had knowledge of the Complainant’s and its products at the time of registration of the Domain Name. The Respondent registered and used the 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 as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s trademark in the Domain Name and the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. Finally, the use of a privacy protection service to hide the Respondent’s identity, also indicates bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights in the trademark IQOS. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety with the addition of “sales”. The addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Name to present itself as a reseller of the Complainant’s products, is not bona fide. The Panel agrees with the Complainant, the website presented itself as a reseller. The website used the Complainant’s official product images and marketing materials. It gives the false impression of a commercial relationship between the website and the Complainant. The disclaimer offered at the bottom of the website is not presented in a sufficiently prominent manner. In addition, the Panel considers that the nature of the Domain Name carries a risk of affiliation or association.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Name and on the web page, the Respondent’s website suggested the Complainant or an affiliated dealer as the source. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. The use of a privacy protection service and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <iqossales.com> be transferred to the Complainant.
Date: July 5, 2019
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