WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / ESTORE IQOS

Case No. D2018-2826

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) / ESTORE IQOS of Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <iqosestore.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2018, 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 14, 2018 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 amendment to the Complaint/amended Complaint on December 17, 2018.

The Center verified that the Complaint together with the amendment to 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2019.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on January 22, 2019. 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries, including the following:

IQOS (word) with US registration number 4763090, registration date June 30, 2015, and foreign registration date July 7, 2014.

IQOS (word) with international registration number 1218246 and registration date July 10, 2014.

IQOS (device) with international registration number 1329691 and registration date August 10, 2016.

HEETS (word/device) with international registration number 1328679 and registration date July 20, 2016.

HEETS (word) with international registration number 1326410 and registration date July 19, 2016.

IQOS THIS CHANGES EVERYTHING (word) with international registration number 1343294 and registration date December 12, 2016.

The disputed domain name <iqosestore.com> was registered by the Respondent on September 3, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant, Philip Morris Products S.A., is part of the group of companies affiliated to Philip Morris International Inc., which is the leading international tobacco company, having products sold in approximately 180 countries and a brand portfolio containing brands such as MARLBORO.

Philip Morris International Inc. has developed the product IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names “Heets” and “HeatSticks” are inserted and heated to generate a nicotine-containing aerosol. The IQOS products were first launched by Philip Morris International Inc. in Nagoya, Japan in 2014. Today the IQOS products are available in key cities in around 43 markets across the world. As a result of a USD 4.5 billion investment and extensive international sales and marketing efforts, the IQOS products have achieved considerable international success and reputation, and already, almost 6 million legal-aged smokers have switched to the smoke-free products worldwide.

The Respondent is not in any way related to the Complainant or any affiliate and is not authorized to use the IQOS trademark.

The disputed domain name <iqosestore.com> resolves to an online shop where not only the Complainant’s IQOS and HEETS branded goods are offered for sale, but also goods produced by competitors to the Complainant. The fact that the website is provided in English and that the prices are displayed USD indicates that the Respondent’s website is directed to Internet users located in the US.

The Respondent’s website is clearly suggesting that the Respondent is an official dealer. The website is prominently using the indication IQOS eStore accompanied by the Complainant’s registered slogan “THIS CHANGES EVERYTHING” at the top left of the website. Below the heading, the website again displays the Complaint’s slogan “THIS CHANGES EVERYTHING” above one of the Complainant’s official marketing videos. In addition, the Respondent is using the Complainant’s official product images combined with the Complainant’s registered IQOS trademark for presenting the products on the website without the Complainant’s authorization.

At the bottom of the website the Respondent includes a copyright notice claiming copyright in all material used on the website.

In the “About Us” section of the website the Respondent uses the Complainant’s official marketing text taken from the Complainant’s official website to promote the IQOS branded products. The Complainant’s marketing text is protected by copyright.

The Respondent’s website does not show any details regarding the provider of the website nor does it acknowledge the Complainant as the real brand owner, leaving the user under the impression that the online shop provided under the disputed domain name is the Complainant or one of its official distributors.

The disputed domain name reproduces the Complainant’s trademark IQOS in its entirety, together with the generic abbreviation “estore” for “electronic store” being a synonym for “online store”.

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 a commercial gain, with a view to misleadingly divert relevant consumers or tarnish the Complainant’s trademark. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS products and secondly, the website does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods.

The appearance of the website suggests that it is endorsed by the Complainant, given that the Respondent is extensively reproducing the Complainant’s official copyright protected marketing materials, marketing texts, and product images, while at the same time falsely claiming copyright in all material presented on the website. Any relevant consumer visiting the website will therefore assume that it is operated by the Complainant or an affiliated retailer authorized by the Complainant.

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 products immediately after registering it. Furthermore, the term IQOS is a purely imaginative term and has no inherent meaning, and it is highly unlikely that the Respondent has used it unintentionally.

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 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.

The illegitimacy of the Respondent’s use of the disputed domain name is further amplified by the fact that the Complaint’s IQOS and HEETS branded products are not currently sold in the United States (where the website appears to be targeting) given that they are the subject of a Pre-Market Tobacco Application that is being assessed by the US Food and Drug Administration which, if granted, will permit commercialization of the products. The online shop provided on the website under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS products into the US market via the Respondent.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark IQOS. The disputed domain name <iqosestore.com> incorporates the Complainant’s trademark IQOS in its entirety with the addition of the term “estore”, which is commonly used as an abbreviation for “electronic store”, a virtual store of a retailer that sells goods or services over the internet. The addition of a descriptive term, such as “estore”, does not prevent a finding of confusing similarity under the first element test. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.

Having the above in mind, the Panel finds that the disputed domain name <iqosestore.com> is confusingly similar to the Complainant’s trademark IQOS and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registration for IQOS predates the Respondent’s registration of the disputed domain name <iqosestore.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.

From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and IQOS trademark. Furthermore, the evidence indicates that the Respondent has copied and reproduced several of the Complainant’s trademarks, photographs, texts, videos and other official marketing material in an attempt to either pass itself off as the Complainant or as an official affiliated dealer endorsed by the Complainant. In addition the above, the Respondent has posted a copyright notice on the website, claiming copyright in all material used.

On the website, to which the disputed domain name resolves, the Respondent is, according to the submitted evidence, offering not only the Complainant’s products for sale but also competing products of other commercial origin.

Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a response, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant has submitted evidence demonstrating that the Respondent’s commercial website displays not only the Complainant’s trademarks IQOS, HEETS, IQOS THIS CHANGES EVERYTHING but also copies of official marketing videos, photographs, texts and other official marketing material belonging to the Complainant.

In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark IQOS at the time the Respondent registered and used the disputed domain name <iqosestore.com>.

Using the disputed domain name <iqosestore.com> in combination with the Complainant’s trademarks, videos, texts, photographs and other official marketing material increases the risk that Internet users may become lured or misled into believing that the disputed domain name and the Respondent’s website belong to or are in some way associated with the Complainant.

In addition to the above, the Complainant has submitted evidence demonstrating that the Respondent is using the disputed domain name <iqosestore.com> to offer for sale not only the Complainant’s products, but also competing products of other commercial origin.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <iqosestore.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark IQOS as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <iqosestore.com> 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 <iqosestore.com> shall be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: February 5, 2019