The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mehdi Mohamadi, Denmark.
The disputed domain name <iqos-ir.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 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 April 1, 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 April 6, 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 April 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 3, 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.
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 64 markets across the globe reaching approximately 17.6 million relevant consumers. The Compainant’s IQOS System is primarily distributed through official or endorsed stores.
At the time of filing the Complaint, the Complainant’s IQOS system was not availabe in Iran (Islamic Republic of).
The Complainant holds a large portfolio of trademarks, including the following:
- the International trademark registration number 1218246 for IQOS, registered on July 10, 2014, and designating many countries worldwide, and covering goods in Nice classes 9, 11, and 34; and
- the International trademark registration number 1329691 for IQOS with device, registered on August 10, 2016, and designating many countries worldwide, and covering goods in Nice classes 9, 11, 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 was registered on March 16, 2021. At the time of filing the Complaint, the disputed domain name was connected to a commercial website allegedly selling and offering the Complainant’s IQOS System, displaying the Complainant’s trademarks and official product images. The website under the disputed domain name was provided in Persian language, the prices were listed in Toman (the Iranian currency) and, according to information available under the transportation section, the website is available for the Iranian market. Further, on the website corresponding to the disputed domain name, the Respondent was promoting an Instagram page and a Telegram channel, both using the Complainant’s trademarks and products images and posting the following claim: “sales of Philips Morris Company (IQOS) products with sales license and after-sales service in Iran”.
The Complainant contends that the disputed domain name is confusingly similar to its distinctive trademark IQOS as it incorporates the mark together with the non-distinctive term “ir”, the geographical abbreviation for Iran (Islamic Republic of), 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.
The Complainant believes that the Respondent was involved in at least one previous UDRP procedure, namely in Philip Morris Products S.A. v. Hamed Ronasian, WIPO Case No. D2020-0031.
The Respondent did not reply to the Complainant’s contentions.
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.
The Panel finds that the Complainant holds rights in the IQOS trademark.
The disputed domain name incorporates the Complainant’s trademark IQOS with an additional term, “ir”. 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 geographical wording, 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).
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization 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 theWIPO 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 theWIPO 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 one condition that is outlined has 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 the Respondent’s relationship with the Complainant, in fact the lack thereof, was not properly disclosed, to the contrary, there were posted false allegations regarding a potential license granted by the Complainant to the Respondent, these generating a likelihood of confusion for the Internet users accessing Respondent’s website.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known mark IQOS and the term “ir”, carries a risk of implied affiliation and cannot constitute fair use as it effectively effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
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).
The Complainant holds registered trademark rights for IQOS since 2014 and has reputation worldwide.
The disputed domain name was created in 2021 and incorporates the Complainant’s mark with an additional non-distinctive term “ir”, which, having in view the other elements in this case, is very likely the geographical abbreviation for “Iran”.
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, together with a geographical term, the content on the website provided thereunder, which includes the Complainant’s trademarks, official product images, and the provision of false statements 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, the website operated under the disputed domain name displays the Complainant’s trademarks and official product images, the social media and communication pages available on the disputed website include further product images, trademarks and false allegations, 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.
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.
The Panel is satisfied that the third element was demonstrated and need not further analyze the circumstance whether the Respondent was involved or not in previous UDRP procedures.
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).
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 <iqos-ir.com> be transferred to the Complainant.
Date: May 18, 2021
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