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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Tony Mak

Case No. D2017-1623

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Tony Mak of San Francisco, California, United States of America (“United States” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <iqostube.com> (the “Domain Name”) 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 August 18, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 August 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2017. On September 1, 2017, the Center received an email from the Respondent requesting a four calendar day extension to submit a Response. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response due date was September 23, 2017. On September 1, 2017, the Complainant submitted a Supplemental filing. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on September 26, 2017.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on October 9, 2017. 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 Philip Morris is a company which is part of the group of companies affiliated to and wholly owned by Philip Morris International Inc. This Company is the world’s leading international tobacco company, which sells its products in more than 180 countries. The Complainant has been researching and developing a new portfolio of smoke-free products, which is called Reduced Risk Products (RRP). One of this smoke-free products developed and sold by the Complainant is named IQOS. This product consists in an electronically controlled heating device into which a specially designed and manufactured tobacco stick is inserted and heated to generate a flavorful nicotine-containing tobacco vapor. IQOS was first launched by the Complainant in Japan in 2014 and today is available in around 25 markets across the world.

The Complainant owns IQOS trademarks worldwide since 2015.

The Respondent is a private individual residing in San Francisco, USA and has registered the Domain Name <iqostube.com> on June 30, 2017.

At the time of the filing of the complaint, the Domain Name was linked to an online-hop offering the Complainant’s IQOS products.

After the notification of the Complaint, the Respondent has changed the website inserting a disclaimer to inform Internet users that the Domain Name is not endorsed or affiliated to Philip Morris.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

a) the Domain Name is confusingly similar to the prior trademark of the Complainant because:

- IQOS is a purely inventive term solely referring to the Complainant and its IQOS products;

- the Domain Name reproduces the Complainant’s trademark in its entirety;

- the adding of a generic descriptive or geographical wording to a trademark such as “tube” and the genericTop-Level domain (“gTLD”) “.com” are insufficient to distinguish it from the mark.

b) The Respondent has no rights or legitimate interests in respect of the Domain Name because:

- the Complainant has never given to the Respondent any license or authorization to use any of its trademarks or to register or use the Domain Name and it is not an authorized reseller of the IQOS products;

- the Domain Name suggest an affiliation – a commercial relationship – with the Complainant and its IQOS trademarks.

c) The Domain Name was registered and is being used in bad faith because:

- the Respondent could not ignore the Complainant’s IQOS trademarks when it registered the Domain Name also because after its registration, it started offering the Complainant’s IQOS products;

- the Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion to the Complainant’s IQOS trademark as to the source, sponsorship, affiliation or endorsement of its website. The circumstance that at first the website did not provide any information on the true identity of the registrant, and that after the notification of the Complaint such information, through a disclaimer, has been given, proves the real intention of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. It just sent an email asking for a four calendar day extension to submit a Response, but it did not file it.

6. Discussion and Findings

The Panel notes that Complainant submitted a Supplemental Filling, but has decided not to take into consideration these filings as there are no exceptional circumstances in this case in accordance with paragraph 10 and 12 of the Rules.

A. Identical or Confusingly Similar

The Complainant has trademark registrations for IQOS in various jurisdictions and started to sell smoke-free products with this trademark since 2014. Therefore, it has been proven that the Complainant has rights in the IQOS trademark.

The Domain Name <iqostube.com> incorporates the Complainant’s trademark with the adding of the dictionary word “tube”.

There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark. In particular, there are UDRP decisions stating that where a domain name incorporates the trademark and a generic word, the domain name is to be considered confusingly similar to the trademark owned by the Complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoIsGuard, WIPO Case No. D2007-1872).

Additionally, the Panel does not typically consider, when analyzing identity or confusing similarity, the gTLD suffix – in this case “.com” – because it is a necessary technical component of the Domain Name and it does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the trademark owned by the Complainant, nor has been authorized to register and use the Domain Name.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Respondent must has been aware of the existence of the IQOS trademark when it registered the Domain Name. It is quite predictable that only someone who was familiar with the Complainant’s marks and products would have registered such domain name including Complainant’s registered and used trademark.

It registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s IQOS trademark. Moreover, the content of the website suggested that the Respondent was an affiliated dealer of the Complainant’s products in fact it sells the Complainant’s products IQOS. The addition of a disclaimer, after the receipt of the Complaint to clarify the lack of any relationship to the Complainant, does not reduce the risk of the confusion and it is a clear evidence of the bad faith use.

The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the registered and used trademark of the Complainant by choosing a domain name that is confusingly similar to the Complainant’s mark.

Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Name has been registered and is being used in bad faith.

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 <iqostube.com> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist
Date: October 18, 2017

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