WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Domains By Proxy, LLC/ Th? Khoi Nguy?n

Case No. D2020-3343

1. The Parties

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

The Respondent is Domains By Proxy, LLC, United States of America / Th? Khoi Nguy?n, Viet Nam.

2. The Domain Names and Registrar

The disputed domain name <iqosstore.shop> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 the Complainant on December 11, 2020 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 December 12, 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 the Respondent of the Complaint, and the proceedings commenced on December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2021

The Center appointed Marilena Comanescu as the sole panelist in this matter on February 1, 2021. 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 subsidiary of Philips Morris International, Inc., an international tobacco company which is selling its products in approximately 180 countries worldwide.

The Complainant manufactures tobacco products, including a system promoted under the mark IQOS, which is an alternative to combustible cigarettes and consists of a controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS System was launched in Japan in 2014 and, with investments of USD 6 billion in sales and marketing, it is currently sold in 61 markets across the globe reaching approximately 16,4 million relevant consumers. The Compainant’s IQOS System is primarily distributed through official or endorsed stores.

At the time of filing the Complaint, the IQOS System was not available in the territory of Viet Nam.

The Complainant holds a large portfolio of trademarks, including the following:

- the International trademark registration number 1218246 for the word IQOS, registered on July 10, 2014, and designating many countries worldwide, including Viet Nam, and covering goods in Nice classes 9, 11, and 34; and
- the International trademark registration number 1461017 for the word IQOS with device, registered on January 18, 2019, and designating many countries worldwide, including Viet Nam, and covering goods in Nice classes 9 and 34.

Previous decisions under the Policy have recognized that the Complainant’s IQOS trademark is well known worldwide in relation to tobacco products. See e.g.Philip Morris Products S.A. v. Viktor Gubin, WIPO Case No. D2020-2196; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; or Philip Morris Products S.A. v. Domain Admin ContactID 5801095, FBS INC, Whoisprotection biz / Bahadır Veziroğlu, WIPO Case No. D2018-2596.

The disputed domain name <iqosstore.shop> was registered on March 18, 2020. At the time of filing the Complaint, the disputed domain name was connected to a commercial website provided in Vietnamese, allegedly selling and offering the Complainant’s IQOS System, displaying the Complainant’s trademarks and official product images.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark IQOS, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the IQOS trademark.

The disputed domain name <iqosstore.shop> incorporates the Complainant’s trademark IQOS with an additional term, “store”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark IQOS, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark IQOS, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “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”. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, at the time of filing the Complaint the disputed domain name resolved to a commercial website featuring the IQOS trademark and offering for sale unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent.

In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine IQOS branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in section 2.8 of the WIPO Overview 3.0 as follows:

Normally, a reseller, distributor or service provider can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and the respondent must not try to “corner the market” in domain names that reflect the trademark.

This summary is based on UDRP panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. At least two conditions that are outlined have clearly not been satisfied by the Respondent in this case: at the time of filing the Complaint, on the website under the disputed domain name there was no accurate information regarding the Respondent and its relationship with the Complainant thus generating a likelihood of confusion for the Internet users accessing Respondent’s website.

Further, the Complainant does not currently offer for sale its IQOS System in the territory of Viet Nam, and the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS System into the Vietnamese market.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds registered trademark rights for IQOS since 2014.

The disputed domain name was created in 2020 and incorporates the Complainant’s mark with an additional non-distinctive term “store”.

For the above, the Panel finds that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its business and particularly targeting its IQOS trademark.

The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s distinctive trademark in the disputed domain name, the content on the website provided thereunder which includes the Complainant’s trademarks, official product images and the lack of any disclaimer on this website.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks and official product images, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

The Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <iqosstore.shop> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: February 15, 2021