WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Admin Code, Code Originate Co., Ltd.
Case No. D2019-1369
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Admin Code, Code Originate Co., Ltd., Thailand.
2. The Domain Name and Registrar
The disputed domain name <iqoscareservice.com> 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 June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 June 17, 2019, 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 June 19, 2019.
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 June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2019.
The Center received an email communication from the Respondent on June 24, 2019, seeking for settlement. On the same day, the Center sent to the Parties a possible settlement email to which the Complainant replied on June 25, 2019, requesting the administrative proceedings to be suspended. Accordingly on the same day, the Center suspended the proceedings until July 25, 2019. On July 25, 2019, the Complainant requested the reinstitution of the proceedings. The proceedings recommenced on July 25, 2019, rendering the due date for Response August 9, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the panel appointment on August 12, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 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 Panel finds the following as uncontested facts:
- The Complainant is the owner the IQOS trademark in word (first registered on July 10, 2014, International registration number 1218246) and various other device and other formats thereafter in multiple jurisdictions, including Thailand.
- The Complainant has used these trademarks in association with “Reduced Risk Products” of vapor cigarettes it developed and has marketed since 2014.
- The Complainant offers these products in 44 markets across the world, with 7.3 million current customers, through official IQOS stores, websites and authorized distributors and retailers. The Complainant has yet to have an authorized distributor or service provider in Thailand.
- The Respondent registered the disputed domain name <iqoscareservice.com> on November 30, 2018, and has used it to operate a website offering the repair of IQOS branded products.
5. Parties’ Contentions
The Complainant claims the Respondent’s use of the <iqocareservice.com> disputed domain name to sell repair services for IQOS branded products in Thailand is confusingly similar to its own trademarks and ownership rights. It further claims the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the registration and the use of the disputed domain name by the Respondent are in bad faith and, therefore, requests the disputed domain name be transferred to the Complainant accordingly.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <iqoscareservice.com> incorporates the entirety of the Complainant’s IQOS trademark. It differs from the Complainant’s trademark merely by the addition of “careservice” after “iqos”. The Panel finds the mere addition of other terms to a registered and well-known trademark does not avoid a finding of confusing similarity under the first element (see AB Electrolux v. ID Shield Service, Domain ID Shield Service CO., Limited / Maksim, zanussi-shop.com, WIPO Case No. D2015-2027and its progeny).
Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark.
B. Rights or Legitimate Interests
The Complainant indicates it has never authorized the Respondent to register or use any domain name by using its trademark. There is no business relationship between the Parties, and the Respondent is not commonly known by the disputed domain name. Noting the nature of the disputed domain name, and the fact that the disputed domain name is being used to offer the repair of IQOS branded products further negatively reflects on the Respondent’s use. See section 2.5.1 of WIPO Overview 3.0. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii),the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established a global brand for its products and finds it difficult to believe that the Respondent was unaware of the brand, and just happened to register a confusingly similar disputed domain name <iqoscareservice.com>. Noting the nature of the disputed domain name, the fact that the disputed domain name resolves to a website featuring repair services for the Complainant’s IQOS products further reveals a financial motive of misleading Internet users, who are trying to find the Complainant’s website, to instead visit the Respondent’s website for its own financial gain. The Panel further notes the Respondent’s liberal use of the Complainant’s trademarks, brands and copyrighted photographs on the website, shows an intention to mislead consumers into believing it is an authorized site. The fact that the Respondent has failed in any way to challenge the Complainant’s contentions further leads the Panel to the conclusion that its registration and use of the disputed domain name has been done in bad faith as set forth under Policy, paragraphs 4(a)(iii) and 4(b)(iv).
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 <iqoscareservice.com> be transferred to the Complainant.
Date: September 4, 2019