WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Shaun Tan

Case No. D2019-2661

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 <iqoseverything.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 October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2019, 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 October 31, 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 amended Complaint] on November 1, 2019.

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 November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. In various communications (on November 6, 7 and 8, 2019), the Respondent requested information about the options for settlement of the dispute. On November 7, 2019, the Center informed the Respondent about the possible suspension of the proceedings in order to negotiate a settlement, and the need, in case of reaching a settlement, to return to the Center a completed Standard Settlement Form. However, on December 3, 2019, the Complainant confirmed that, as the Respondent did not provide the requested Settlement Form to the Complainant, the Parties were unable to reach a settlement.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 13, 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 Complainant is part of an international group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the worldwide reputed trademark MARLBORO. The Complainant and its group have developed various reduced risk products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014 and now is sold in 51 markets across the world. The product identified by the mark IQOS is a controlled heating device, collectively referred as IQOS System, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products (identified by the marks HEETS or HEAT STICKS) are inserted and heated to generate a flavorful nicotine-containing aerosol.

The Complainant holds a large portfolio of registered trademark rights in the mark IQOS in many jurisdictions, denominative or with a specific graphic representation, of which the following are sufficiently representative for the present proceeding:

- International Trademark No. 1218246 IQOS, word mark, registered July 10, 2014, in classes 9, 11 and 34, designating, among other jurisdictions, Malaysia;

- Malaysian Trademark No. 2017007847 IQOS, word mark, registered July 26, 2017, in class 35;

- International Trademark No. 1338099 IQOS, figurative, registered November 22, 2016, in class 35, designating, among other jurisdictions, Malaysia;

- International Trademark No. 1329691 IQOS, figurative, registered August 10, 2016, in classes 9, 11 and 34, designating, among other jurisdictions, Malaysia.

The disputed domain name was registered on August 22, 2019. It resolves to a website, in English language, apparently owned by a company that identifies itself as “IQOS Malaysia”, and allegedly offering the Complainant’s IQOS System and products online sale. This website includes the Complainant’s logo within its tab interface, and the words “IQOS Malaysia”, all in capital letters, in its heading, at the top right side before the text content of the site, not including any details regarding its owner and/or its relationship to the Complainant. The website content includes a number of the Complainant’s official product images providing a copyright notice at the bottom of the Website claiming copyright in the material presented on the site. The prices of the site are in Malaysian ringgit currency, although it offers delivery worldwide. The contact information section of this site only includes a cell phone number a link to it through WhatsApp.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Through its intensive use and promotion, with a USD$6 billion investment, the trademark IQOS has achieved considerable international success and reputation with approximately 8 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers. In connection to these allegations, various excerpts from the Complainant’s corporate website under the domain name <pmi.com> are attached to the Complaint.

The disputed domain name reproduces the Complainant’s trademark IQOS in its entirety, with the addition of the descriptive word “everything”, which does not avoid confusing similarity, being the Complainant’s trademark recognizable within the disputed domain name. The Top Level Domain (“TLD”) is a standard registration requirement and as such is disregarded under the first element confusing similarity test, and the addition of merely generic, descriptive, or geographical term to a mark included in a domain name normally is considered insufficient to avoid a finding of confusing similarity under the first element of the Policy. Therefore, the disputed domain name is confusingly similar to the Complainant’s mark.

The Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark IQOS, and the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. 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 Complainant’s trademark. The website provided under the disputed domain name does not meet the requirements for a bona fide offering of goods by resellers or distributors established in, Oki Data Americas, Inc. v. ASD., WIPO Case No. D2001-0903. The disputed domain name in itself and the content of the website linked to the disputed domain name suggest affiliation with the Complainant and its trademark IQOS. The Respondent’s website includes no information regarding the identity of its provider, and displays various Complainant’s official product images, as well as the mark IQOS and its logo in a prominent position (with no authorization), which reinforces the false impression of an official commercial relationship between this website and the Complainant.

The disputed domain name was registered and is being used in bad faith. As the Respondent started offering the Complainant’s products immediately after registering the disputed domain name, it is evident the Respondent knew of the Complainant’s trademark when registering the disputed domain name. Further, the term “iqos” is purely imaginative and unique, not being commonly used in the tobacco sector. The Respondent registered and uses 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 and its registered trademark, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website (by reproducing the Complainant’s registered trademark in the disputed domain name and the heading of the Website, and by the use of the Complainant’s official product images accompanied by a copyright notice).

Furthermore, the fact that the Respondent is using a privacy protection service to hide its identity may in itself constitute a factor indicating bad faith.

The Complainant has cited previous decisions under the Policy as well as various paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, it sent several email communications in order to negotiate a settlement.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent you has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8, WIPO Overview 3.0.

A. Identical or Confusingly Similar

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 identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of WIPO Overview 3.0.

Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark IQOS. The disputed domain name incorporates this mark in its entirety followed by the term “everything”, which does not avoid confusing similarity with the trademark. The Complainant’s trademark IQOS is directly recognizable in the disputed domain name, and the gTLD “.com” adds no distinctive meaning, being a technical requirement, and is generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant has alleged that the Respondent is not a licensee nor have him been otherwise authorized to use the trademark IQOS. Further, the Complainant has alleged that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, not meeting the requirements set out by Oki Data Americas, Inc. v. ASD, WIPO Case No. D2001-0903, followed by numerous decisions under the Policy, for a bona fide offering of goods by resellers or distributors.

This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is remarkable the Respondent’s attitude deliberately choosing not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances or any other that may be considered as a fair use or legitimate interests in the disputed domain name.

Resellers or distributors, using a domain name containing the complainant’s trademark to undertake sales 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, if the following cumulative requirements are meet:

(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.

The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD, WIPO Case No. D2001-0903). See section 2.8, WIPO Overview 3.0.

The evidence in the file shows the disputed domain name is linked to a website, which indicates in its heading and its content as the website owner “IQOS Malaysia”, all in capital letters, allegedly offering online sale of the Complainant’s products. The Respondent’s name, according the Registrar verification, does not appear in this website, not providing any reference or details regarding its ownership or that of the disputed domain name, and not acknowledging the Complainant as the real owner of the trademark IQOS and products offered on the site. Further, this website does not reveal the Respondent’s lack of relationship with the Complainant. On the contrary, all its content leads to create an affiliation with the Complainant.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a dictionary term (“everything”), which also may point to the Complainant and its notorious trademark, as a general indication of its product range. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel further notes the extensive presence of the trademark IQOS over the Internet, as well as the extensive use of this mark worldwide, including Malaysia, where the Respondent is apparently located, according the information received by the Registrar, and operates, according to the website content linked to the disputed domain name. Furthermore, the Panel notes the continued use of the trademark IQOS in Malaysia, according to the information provided in the Complainant’s corporate website (under the domain name <pmi.com>). In this country, the Complainant’s group operates since 1968 through an affiliate company, Philip Morris (Malaysia) Sdn Bhd, which has approximately 500 employees and commercializes IQOS systems and products since 2016. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s website.

The Panel further considers that the use of the disputed domain name linked to a website containing official images of the Complainant’s products alleging copyright in relation to the said website as well as to its content, contributes to a high risk of affiliation and confusion. The website linked to the disputed domain name does not include any clear reference to its ownership or that of the disputed domain name, nor does it include any reference to the lack of relationship with the Complainant’s trademark and business.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”

At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about IQOS mark, and did not have it in mind. Several factors in this case lead to this conclusion.

The Panel notes the extensive presence of the trademark IQOS over the Internet, as well as its extensive use and promotion worldwide, including Malaysia, where the Respondent is located (according to the information provided by the Registrar). The Complainant’s trademark is being used and registered for more than five years in 51 jurisdictions, and since 2016 in Malaysia, and it is being extensively promoted worldwide. Further, the term “iqos” is a fanciful term, purely imaginative, not being commonly used in the tobacco industry. Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, adding the descriptive term “everything”, which also may point to the Complainant’s notorious trademark, as a general indication of its product range. In addition, the disputed domain name is used in connection to a website that refers and allegedly commercializes the Complainant’s products and systems, which increases the intrinsic risk of confusion and association. Furthermore, said website does not include any clear reference to its ownership or that of the disputed domain name, not indicating its owner fiscal number, legal registration, or any reference to its social form and/or country of incorporation. The sole contact details included in this website is a cell phone number and a link to that number over the WhatsApp application.

The Panel further notes that the contact details of the WhoIs were private, and the Respondent’s attitude deliberately choosing not to reply to the Complaint are further evidence of bad faith.

The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:

“(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business, as per paragraph 4(b)(iv) of the Policy

All the above-mentioned lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 <iqoseverything.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: December 23, 2019