WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Md Abu Sayed

Case No. D2021-0393

1. The Parties

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

The Respondent is Md Abu Sayed, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <iqosvapenet.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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 February 15, 2021, 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 February 16, 2021.

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 February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2021.

On March 17 and 19, 2021, the Respondent sent email messages to the Center stating he was not the owner of the disputed domain name, and referring it was registered on behalf of one of his clients, headquartered in Dubai, whose name was not informed. In these short communications, the Respondent did not answer any of the Complainants grounds in the Complaint.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 17, 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 company which is part of the Philip Morris International group, a leading international tobacco company, with products sold in approximately 180 countries, under brands such as MARLBORO.

The Complainant’s parent group is currently in the course of transforming its business from combustible cigarettes to reduced risk products. One of these new products is called IQOS, a controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol.

The Complainant owns a large portfolio of IQOS trademarks, including the United Arab Emirates Trademark Registration number 211139, registered on March 16, 2016.

The disputed domain name was registered on December 15, 2020.

The Panel accessed the disputed domain name on March 28, 2021, which resolved to a webstore named “Iqos Vape Net”, containing reproductions of the IQOS trademark and where nicotine heating devices (“vapes”) were offered for sale, including IQOS devices and competing products. The “About us” section of the webstore at the disputed domain name was empty and there was just a small reference – at the very bottom of the website, in small letters – that it was not an official IQOS or Phillip Morris website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the registered owner of the IQOS trademark in numerous jurisdictions, including, but not limited to the United Arab Emirates. It is well accepted that the test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name. A domain name is confusingly similar to a trademark, when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name and therefore will likely be associated with the respective trademark. Thus, it cannot be questioned that the disputed domain name is confusingly similar to the IQOS trademark registrations of the Complainant. It is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. It is further established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. The disputed domain name reproduces the IQOS trademark in its entirety, in addition to the non-distinctive and descriptive words “vape” and “net”. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark). The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, 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 trademarks owned by the Complainant. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the website at the disputed domain name is selling competing tobacco products and/or accessories of other commercial origin. Thirdly, the website does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In addition, the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the top left of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider. The website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. The website includes no information regarding the identity of its provider. The disclaimer offered at the bottom of the website is not presented in a clear and sufficiently prominent manner. Moreover, the fact that the Respondent is not only offering the Complainant’s products but also competing tobacco products and/or accessories of other unknown commercial origin is in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. As the Complainant’s IQOS System is primarily distributed through official / endorsed stores, in this case Internet users / relevant consumers are clearly misled regarding the relationship between the website and the Complainant, and will falsely believe the website under the disputed domain name to be an official / endorsed distributor.

The disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name. Furthermore, the term IQOS is purely an imaginative term and unique to the Complainant. The term IQOS is not commonly used to refer to tobacco products or electronic devices. It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed 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 on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Additionally, the abusive use of the Complainant’s IQOS trademark for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith. Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, but just informally communicated he is not the owner of the disputed domain name and stated it was registered on behalf of one of his clients, headquartered in Dubai, in late email messages sent to the Center. The Respondent did not provide the name of this alleged client or any evidence in this regard. Moreover, the Registrar has confirmed that the Respondent is the registrant of the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that “iqos” is a term directly connected with the Complainant’s smoking devices.

Annex 6 to the Complaint shows registrations of IQOS trademarks obtained by the Complainant, including in the United Arab Emirates, in 2016.

The trademark IQOS is wholly encompassed within the disputed domain name, together with the terms “vape” (a common jargon for electronic cigarettes) and “net” (an usual complement to indicate the e-commerce or online version of a store), as well as with the TLD extension “.com”.

Previous UDRP decisions have found that the addition of descriptive terms (such as “vape” and “net”) does not prevent a finding of confusing similarity between a disputed domain name and a complainant’s trademark. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also well established that the addition of a TLD such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its well-known trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

Furthermore, the Complainant has shown that the disputed domain name is linked to a website offering the Complainant’s IQOS devices for sale, reproducing the Complainant’s trademark and logo, as well as a number of the Complainant’s official product images and marketing materials. However, according to the Complainant, the Respondent is not an authorized reseller, nor has obtained any permission for such reproductions of trademarks, logos and copyrighted materials.

Additionally, although encompassing the Complainant’s trademark IQOS at the disputed domain name and entitling the respective website “Iqos Vape Net”, such website also offers for sale competing devices and does not accurately and prominently disclose the registrant’s relationship with the trademark holder. In this respect, the Panel agrees with the Complainant’s contention that the disclaimer at the bottom of the website is not presented in a clear and sufficiently prominent manner. Therefore, the Respondent does not pass the “Oki Data test” to characterize a legitimate interest on the disputed domain name (see Oki Data Americas, Inc. v. ASD, Inc., supra).

Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, 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 disputed domain name encompasses the distinctive and peculiar term “iqos”, which has no dictionary meaning in English. Also, the Panel considers that the addition of the terms “vape net” even enhances the perception that the disputed domain name is sponsored or endorsed by the Complainant, in the present case, as it may suggest that the products sold on the website are being offered by an IQOS authorized online reseller.

Furthermore, when the disputed domain name was registered (in 2020) the IQOS trademark was already connected with the Complainant’s smoking devices.

Therefore, the Panel concludes that it is not feasible that the Respondent was not aware of the Complainant’s trademark and that the adoption of the disputed domain name was a mere coincidence.

Actually, the content at the website linked to the disputed domain name - including reproductions of the Complainant’s trademark and the description of the respective product, which is being offered for sale - makes clear that the Respondent intentionally attempted to attract the Complainant’s customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

The situation is aggravated by the offer of competing products through a domain name that reproduces the Complainant trademark.

Finally, the absence of a formal reply from the Respondent to the Complainant’s contentions and of any justification for the use of such well-known smoking device trademark are further evidences of bad faith in the present case.

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 <iqosvapenet.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: March 31, 2021