WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Sean Tan

Case No. D2020-0512

1. The Parties

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

Respondent is Sean Tan, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <myiqosmalaysia.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 March 3, 2020. On March 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 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 Complainant on March 5, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 6, 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 Respondent of the Complaint, and the proceedings commenced on March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. The Center received a communication from Respondent by email on March 10, 2020. The Respondent did not submit a formal response. Accordingly, on March 31, 2020, the Center informed the parties that it will proceed to appoint a panel.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 27, 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

Complainant is Philip Morris Products S.A., a company which is part of the group Philip Morris International Inc. Complainant is a leading international tobacco company which sells its products in approximately 180 countries.

Complainant is known for being transforming its business from standard cigarettes to Reduced Risk Products (or “RRPs”), which are products that offer less risk of harm to smokers. Complainant has developed a number of RRP products, including one branded IQOS.

According to Complainant, Iqos is “a precisely 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”.

Complainant’s IQOS System was first launched by Philip Morris International Inc. in Nagoya, Japan in 2014 and has obtained 18.3% share of the market in Japan. Today, the IQOS System is available in around 52 markets across the world. As a result of a USD 6 billion investment and extensive marketing efforts, over 9.5 million relevant consumers converted to the IQOS System worldwide.

In order to protect its investments and rights over its innovative smoke-free products, Complainant has registered many trademarks worldwide, for example:

- Malaysian Registration IQOS (wordmark) No. 2017007847 registered on July 26, 2017;

- International Registration for(composed mark) No. 1338099 registered on November 22, 2016 designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Colombia, Egypt, European Union, Georgia, Israel, India, Iceland, Japan, Republic of Korea, Kazakhstan, Morocco, Monaco, Montenegro, Mexico, Norway, New Zealand, Oman, Philippines, Russian Federation, Serbia, Singapore, Turkey, Ukraine, United States of America;

- International Registration for (composed mark) No. 1329691 registered on August 10, 2016 designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Botswana, Belarus, China, Colombia, Curaçao, Egypt, European Union, Georgia, Israel, India, Iceland, Japan, Kenya, Kyrgyzstan, Republic of Korea, Liechtenstein, Morocco, Monaco, Montenegro, Mexico, Mozambique, New Zealand, North Macedonia, Norway, OAPI, Oman, Philippines, Republic of Moldova, Russian Federation, Serbia, Singapore, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan, Viet Nam;

- International Registration for(composed mark) No. 1328679 registered on July 20, 2016 designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Curaçao, Egypt, European Union, Georgia, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, North Macedonia, Norway, New Zealand, OAPI, Oman, Philippines, Republic of Korea, Republic of Moldova, Russian Federation, Serbia, Singapore, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan, Viet Nam;

- International Registration for HEETS (wordmark) No. 1326410 registered on July 19, 2016 designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Curaçao, Egypt, European Union, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, New Zealand, North Macedonia, Norway, OAPI, Oman, Philippines, Republic of Korea, Republic of Moldova, Russian Federation, Serbia, Singapore, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan, Viet Nam;

- International Registration for HEATSTICKS (wordmark) No. 1217386 registered on July 21, 2014 designating Albania, Algeria, Armenia, Bahrain, Belarus, Bosnia and Herzegovina, Colombia, Egypt, European Union, Georgia, India, Iceland, Israel, Kazhakstan, Kyrgyzstan, Morocco, Monaco, Montenegro, New Zealand, North Macedonia, Oman, Philippines, Republic of Moldova, Serbia, Tunisia, Turkey, Ukraine, Viet Nam.

At last, it is important to note that the disputed domain name <myiqosmalaysia.com> was registered by Respondent on January 15, 2020 and resolves to a page selling and offering Complainant’s IQOS System products.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name <myiqosmalaysia.com> is confusingly similar to its registered trademark IQOS. This is because the disputed domain name incorporates the sign IQOS in its entirety and, therefore, will likely be associated with the mentioned trademark regardless the existence of other terms in the disputed domain name.

In this regard, Complainant argues that the addition of merely geographical word, such as “Malaysia” to a trademark in a domain name would normally be insufficient to avoid a finding of confusing similarity. Complainant affirms, thus, that any Internet user when visiting a website provided under the disputed domain name <myiqosmalaysia.com> will reasonably expect to find a website linked to the owner of the IQOS trademarks. However, Respondent is not an authorized distributor or reseller of the IQOS System.

Complainant also claims that Respondent uses the IQOS logo within the tab interface of the issued website as well as Complainant’s official product images and marketing materials without authorization, while falsely claiming copyright in this material.

Considering this scenario, Complainant believes that its consumers are being persuaded to wrongly believe that the website under the disputed domain name is an official/endorsed distributor of the IQOS System, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark IQOS nor any permission to register the trademark as a domain name.

Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that, on the contrary, Respondent shows a clear intent to obtain an unfair commercial gain by misleading consumers or tarnishing the trademarks owned by Complainant.

Complainant mentions that a reseller or distributor can make a bona fide offering of goods or services and thus have a legitimate interest in the disputed domain name only if certain requirements are met. However, in this case, Respondent would not have complied with those requirements. Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.

Moreover, Complainant claims that Respondent was aware of Complainant’s well-known business when registering the disputed domain name, since Respondent started offering Complainant’s IQOS System immediately after registering it.

Complainant affirms that the term IQOS is imaginative term and unique to Complainant, meaning that the term is not commonly used to refer to tobacco products or electronic devices. This way, it would be a huge coincidence that Respondent had chosen the disputed domain name without the sole intention of causing a misleading association with Complainant.

ln conclusion, Complainant alleges that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark IQOS as to the source, sponsorship, affiliation or endorsement of Respondent's website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

At last, Complainant submits that Respondent had a recent involvement in the bad faith registration and use of the domain name <iqoseverything.com> (in Philip Morris Products S.A. v. Shaun Tan, WIPO Case No. D2019-2661), which shows a pattern of bad faith conduct in connection with domain names incorporating Complainant’s trademark.

Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.

B. Respondent

The Center received Respondent’s communication by email on March 10, 2020. In that opportunity, Respondent solely said “sure bro” in reply to a message he received from the Registrar of the disputed domain name affirming, in summary, that the issued domain name had been placed on Registrar Lock, what would not affect the functionality of the website.

6. Discussion and Findings

To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(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 has been registered and is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant showed that it owns several registrations around the world for the trademark IQOS that predate Respondent’s registration of the disputed domain name.

The Panel finds that, in the present case, the disputed domain name <myiqosmalaysia.com> incorporates the entirety of the mentioned trademark with the addition of the geographical term “Malaysia”, which adds no distinctive meaning to the disputed domain name. The existence of the term “Malaysia” in the disputed domain name does not avoid a finding of confusing similarity with the trademark.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of the first element of paragraph 4(a) of the Policy are satisfied.

B. Rights or Legitimate Interests

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <myiqosmalaysia.com>.

The Panel finds that Respondent’s use of the disputed domain name incorporating Complainant’s trademark with the addition of a geographical word does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.

According to section 2.8 of the WIPO Overview 3.0, “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”.

To prove its legitimate interests, a respondent in this specific conditions has to meet the following cumulative requirements:

(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 Panel notes that Respondent does not comply with the requirements (iii) and (iv). There is no information in the website regarding the identity of the provider, which is only identified as “IQOS Malaysia” - a name that reproduces, with no authorization, Complainant’s registered IQOS trademark. This fact perpetuates the impression of an official commercial relationship between the website and Complainant, which in reality does not exist.

In addition, Complainant’s IQOS System is primarily distributed through official/endorsed stores. The Panel believes that use of Complainant’s trademark and official images within the website misled consumers regarding the relationship between the website and Complainant. Internet users may falsely believe that Respondent’s website is an official/endorsed distributor of IQOS products.

Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not properly replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present case.

In addition, the nature of the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel finds that Respondent had knowledge of Complainant’s rights to the trademark IQOS at the time of registration of the disputed domain name, mainly for the following reasons: (i) Respondent uses without authorization the IQOS logo and official images of Complainant's products in its website; (ii) Complainant's trademark IQOS was first registered in 2016, while the disputed domain name <myiqosmalaysia.com> was registered by Respondent only in 2020; (iii) the term IQOS is not commonly used to refer to tobacco products or electronic devices; and (iv) the nature of the disputed domain name. It is therefore evident that Respondent had the intention of making a misleading association with Complainant when registering the disputed domain name.

The evidence also shows that Respondent was likely trying to promote its business by creating an undue association with Complainant when using the sign IQOS as the distinctive parcel of the disputed domain name. It is clear for the Panel that Respondent attempts to attract consumers to its website by using Complainant’s trademark IQOS in order to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website.

Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent did not present a reasonable response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied 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 <myiqosmalaysia.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: May 11, 2020