WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Domains By Proxy, LLC / John Lawrence
Case No. D2019-2584
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC United States of America / John Lawrence, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <iqostation.com> (“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 October 22, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2019, 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 October 23, 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 October 24, 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 October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on November 19, 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 Philip Morris Products S.A. is part of Philip Morris International Inc., a large international tobacco company. It sells a tobacco heating system under the trademark IQOS. The IQOS system consists of what the Complainant describes as a precisely controlled heating device into which specially designed tobacco units known as HeatSticks, are inserted and heated to generate a nicotine-containing aerosol. The Complainant owns trademark registrations covering the IQOS trademark (first registered in 2014), a stylized logo version of the IQOS trademark, and a Q device (collectively, the IQOS System Marks).
The Respondent registered the Domain Name <iqostation.com> on March 29, 2019. The Domain Name directs to an ecommerce shop selling tobacco heating products under the IQOS System Marks, as well as tobacco heating products under the marks of competitors of the Complainant.
5. Parties’ Contentions
The Complainant owns numerous registrations for the IQOS trademark and the IQOS System Marks. For example, the Complainant owns International Registration No. 1218246 for IQOS, registered on July 10, 2014, which designated more than 30 jurisdictions.
The Complainant argues that the Domain Name is an:
“an obvious or intentional ‘misspelling’ of the IQOS trademark by using the letter ‘t’ at the end of the word ‘iqos’ to create the non-distinctive word ‘station’ […] The Disputed Domain Name contains obvious and sufficiently recognizable (sic) aspects of the IQOS trademark and, by employing a ‘misspelling’ in this way, it clearly signals an intention on the part of the Respondent (as corroborated by the infringing copyright protected website content) to confuse users seeking or expecting the Complainant.”
The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because 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.
Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because:
(i) the Respondent is neither an authorized distributor, reseller nor a repair services operator of the IQOS System; and
(ii) the website provided under the Domain Name does not meet the requirements for a bona fide offering of goods or services because;
(a) the Domain Name in itself suggests at least an affiliation with the Complainant and its IQOS trademark;
(b) the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the top 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 Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent knew of the Complainant’s trademark at the time of the Domain Name registration. The Complainant contends that the Respondent chose the Domain Name intending to invoke a misleading association with the Complainant. The Complainant claims that the Respondent has registered and used 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 registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website or its services. The Complainant submits that the Respondent’s use of a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trademark IQOS through its ownership of registrations, some of which were registered as early as 2014. It has demonstrated use of the IQOS trademark at its website at “www.iqos.com”.
The IQOS trademark is identifiable in the Domain Name and incorporated in its entirety. The Panel finds that the addition of the letters “tation” does not remove the confusing similarity with the Complainant’s trademark IQOS.
In fact, because of the common practice of “telescoped” trademarks (a trademark comprising two or more words that share letters), consumers will likely ignore the missing “s” and read the string as “IQOS Station”.). Because the word “station” is sometimes used as a suggestive term for a retail store, it is probable that consumers will understand “IQOS Station” to designate an ecommerce website that sells IQOS System products (and thus having some sort of connection to the Complainant’s IQOS trademark).
Additionally, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Accordingly, the Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied
B. Rights or Legitimate Interests
The Respondent’s website at the disputed Domain Name, offers what appears to be products bearing the IQOS System Marks, which products are illustrated by images identified by the Complainant as official product images. Other products promoted on the website bear the marks of competitors such as “FIIT Heatsticks”. The most prominent trademark on the home page of the website is the IQOS stylized logo. The Complainant’s Q logo is also displayed. The website bears a copyright notice in the name “IQOStation.” Additionally, a store location page depicts the Complainant’s Tokyo store.
While a reseller of a complainant’s trademarked products could, in theory, be making a bona fide offering of goods or services (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 here, the Respondent does not satisfy the conditions set out in Oki Data (hereinafter “Oki Data”)).
The panel in Oki Data, sets out four factors in determining trademark fair use, three of which are potentially relevant here:
(1) the Respondent must use the site to sell only the trademark goods;
(2) the Respondent must actually be offering the goods or services at issue; and
(3) the site itself must accurately disclose the Respondent’s relationship with the trademark owner.
First, there are unrebutted allegation that the Respondent uses the site to sell non-IQOS branded products, specifically, FIIT branded Heatsticks. (The absence of age-verification on the Respondent’s website also suggests that the website is unauthorized.)
Second, through the prominent use of the IQOS System Marks, seemingly as housemarks, and by falsely stating an association (even if a “grey market” one) with the store of the Complainant, the Respondent has misleadingly suggested some form of association and/or endorsement by the Complainant, and thus has not accurately described its relationship with the trademark owner.
As the Respondent has not been authorized to use the Complainant’s IQOS mark, has not been commonly known by the Domain Name, and has not otherwise demonstrated rights or legitimate interests in the Domain Name, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant owns the IQOS trademark associated with its tobacco heating system. The Respondent clearly has targeted the Complainant, as it is selling tobacco products that purport to originate from the Complainant. Even if such products were authentic (and there is no evidence that suggests that they are), the Respondent’s registration and use of the Domain Name is in bad faith, as the use of a domain name (and corresponding website) reflecting the Complainant’s trademark without distinguishing elements, as well as the Respondent’s false declarations, exceeds any possible concept of nominative fair use. If the products are not authentic, or if the Respondent does not actually ship the products ordered over the site, then again, the Respondent is clearly acting in bad faith.
As the Respondent is likely acting for commercial gain with obvious knowledge of the Complainant’s rights in its IQOS trademark, the Panel finds that the evidence establishes bad faith registration and use under paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <iqostation.com> be transferred to the Complainant.
Date: November 30, 2019