WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Joseph Chartouni

Case No. D2020-0351

1. The Parties

Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

Respondent is Joseph Chartouni, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name is <iqos-lebanon.com> which 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 February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. The Center sent an email communication to Complainant on February 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 20, 2020. ¹

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 Respondent of the Complaint, and the proceedings commenced on February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2020.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on March 24, 2020. This Panel finds that it was properly constituted. This 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

Complainant is a Swiss company and a subsidiary of Philip Morris International, Inc. (jointly “PMI”), a leading international tobacco company.

Complainant has rights over: the IQOS trademark for which it holds registration No. 158488 registered on May 22, 2014, with the Intellectual Property Protection Office of Lebanon in classes 9, 11 and 34; the IQOS figurative trademark for which it holds International registration No. 1214416, registered on June 11, 2014 in classes 9, 11 and 34; the HEETS trademark for which it holds registration No. 175201 registered on January 28, 2016, with the Intellectual Property Protection Office of Lebanon in classes 9, 11 and 34 (the “Trademarks”).

The disputed domain name was registered on March 16, 2018. By the time the Complaint was filed, the website associated to the disputed domain name showed, among others, “IQOS AND HEETS LEBANON”, “CONTACT US Please fill up you name, mail and request, we will get back to you asap”, “Phone & WhatsApp […]”, “We ship worldwide”, “Free delivery within Beirut”, “Copyright © 2018 IQOS AND HEETS LEBANON – All Rights Reserved.”, “IQOS DUO” followed by an image of a product followed by “Newly released – Limited quantities With IQOS Duo you can smoke 2 cigarettes continuously without the need for recharging it. 170 usd”, “BUY 3.0 AND ONE PARLIAMENT PACK FOR 160USD IQOS 3.0 + 1 Parliament pack = 160$”, “NEW IQOS 3.0 FOR 140USD”, “PARLIAMENT HEETS RUSSIAN $40.00”, and several images of products bearing the HEETS or IQOS trademarks.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

PMI has developed a number of products, one of these is branded 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 flavorful nicotine-containing aerosol. The IQOS system also consists of an IQOS pocket charger specially designed to charge the IQOS holder (collectively, the “IQOS System”). The IQOS System was first launched by PMI in Japan in 2014, and today it is available in key cities in around 52 markets across the world. As a result of a billionaire investment and extensive international sales and marketing efforts, the IQOS System has achieved considerable international success and reputation, and already around 9.5 million relevant consumers have converted to the IQOS System worldwide. To date, the IQOS Products has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.

For its new innovative smoke-free products Complainant owns a large portfolio of well-known trademarks, including the Trademarks, registered in numerous jurisdictions.

The disputed domain dame is linked to an online shop at “www.iqos-lebanon.com” (the “Website”) allegedly selling and offering Complainant’s IQOS System. The Website is provided in English. The fact that the Website is indicating all prices in USD, as well as presenting the designations “We ship worldwide” and “Free delivery within Beirut”, clearly indicates that the Website is not only directed to Lebanon, but also to a global audience. Complainant’s IQOS System is not currently sold in Lebanon nor in every country of the world, and is currently sold in approximately 52 markets. Notwithstanding the Website is clearly purporting to be an official online retailer of Complainant’s IQOS System in Lebanon, as well as on a global basis.

The Website is prominently using Complainant’s IQOS and HEETS trademarks at the top of the Website, as well as within the Website banner, being locations where Internet users usually expect to find the name of the online shop and/or the name of the provider of the Website. The Website is further using a number of Complainant’s official product images and marketing material without Complainant’s authorization, while at the same time providing a copyright notice at the bottom of the Website claiming copyright in the material presented on the Website and thereby strengthening the false impression of an affiliation with Complainant.

The Website does not show any details regarding the provider of the Website, leaving the Internet user under the false impression that the online shop provided under the Website, is that of Complainant or that it is connected to that of Complainant or one of its official distributors, which it is not.

The disputed domain name is confusingly similar to the IQOS trademark of Complainant. The disputed domain name reproduces such trademark in its entirety, in addition to the non-distinctive geographical indication “Lebanon”. The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity.

Respondent lacks any right or legitimate interest in the disputed domain name. Respondent is not known or in any way related to Complainant or any PMI affiliate. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark. Respondent is not an authorized distributor or reseller of the IQOS System.

Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by Complainant. A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met.² The Website does not meet the requirements set out by numerous UDRP decisions for a bona fide offering of goods. It is a common principle in all such cases that the use of a domain name cannot be fair if it suggests affiliation with the trademark owner. The disputed domain name in itself suggests at least an affiliation with Complainant and its IQOS trademark. The Website’s contents support the false impression that the Website is endorsed by Complainant. As Complainant’s IQOS System is primarily distributed through official stores, Internet users are clearly misled regarding the relationship between the Website and Complainant, and will falsely believe the Website to be an official distributor. Complainant does not currently offer for sale its IQOS System in every country of the world, including Lebanon, and the online shop provided under the disputed domain name creates the false impression that Complainant has officially introduced the IQOS System into every market in the world, including the Lebanese market.

It is evident from Respondent’s use of the disputed domain name that Respondent knew of the IQOS trademark when registering the disputed domain name. Respondent started offering Complainant’s IQOS System immediately after registering the disputed domain name. The term IQOS is purely an imaginative term, unique to Complainant, and is not commonly used to refer to tobacco products or electronic devices.

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 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. The reproduction of Complainant’s registered trademark in the disputed domain name and the title of the Website clearly suggests that Complainant or an affiliated dealer of Complainant is the source of the Website. This suggestion is further supported by Respondent’s use of Complainant’s official product images and marketing material, accompanied by a copyright notice claiming the copyright for the Website and its contents.

The fact that Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

The lack of response from Respondent does not automatically result in a favorable decision for Complainant.³ The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the IQOS trademark.

Since the addition of a generic Top-Level Domain suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.

The disputed domain name identically reflects the IQOS trademark, albeit followed by the suffix “-lebanon”. It is clear to this Panel that “iqos” is recognizable in the disputed domain name, and that the addition of such suffix in the disputed domain name does not avoid its confusing similarity with said trademark. See sections 1.7 and 1.8 of WIPO Overview 3.0.

Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant asserts that it has not authorized Respondent to use the Trademarks or to register a domain name incorporating its IQOS trademark, that Respondent is not known or in any way related to Complainant or any PMI affiliate, that Respondent is not an authorized distributor or reseller of the IQOS and HEETS products, and that the Website shows Complainant’s official product images and legends without authorization, while at the same time falsely claiming copyright in that material which suggests that Complainant or an affiliated dealer is the source of, or endorse, the Website.

Complainant provided screenshots of the Website (see section 4 above), which on their face corroborate Complainant’s assertions. From those screenshots, it appears that the Website does not show any disclaimer as regards Complainant thus leading consumers to believe that the Website reached from the disputed domain name may be owned by, or at least somehow associated with, Complainant. All that demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

The evidence in the file shows that Respondent deliberately targeted Complainant’s IQOS trademark at the time it obtained the disputed domain name. Taking into consideration that Complainant’s registration and use of the IQOS trademark preceded the creation of the disputed domain name, and the content of the Website, this Panel is of the view that Respondent should have been aware of the existence of the IQOS trademark at the time it obtained the registration of the disputed domain name.

The Website was used to sell allegedly Complainant’s IQOS and HEETS products, showing images of such products bearing the Trademarks, with an apparent focus in the Lebanese market, although the Website shows the legend “We ship worldwide”. Complainant contends that it does not offer for sale its IQOS and HEETS products in Lebanon, and thus the Website creates the false impression that Complainant has officially introduced the IQOS and HEETS products into the Lebanese market. There appears to be no disclaimer disassociating the Website from Complainant, which is indicative of bad faith (see Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809). It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainant and the Trademarks as to the sponsorship, source, affiliation, or endorsement of the Website and products offered therein, when in fact there is no such connection.

Thus the overall evidence shows that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Website.

Further, the fact that Respondent has hidden its identity and contact information through a privacy service has been a further indicative of bad faith under several UDRP decisions (see section 3.6 of the WIPO Overview 3.0).

In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.

In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <iqos-lebanon.com> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Date: April 7, 2020

¹ The original Complaint was filed against Domains By Proxy, LLC, which appeared as registrant in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.

² Complainant refers to the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, further developed in several UDRP cases.

³ See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).