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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Sujon Kobir

Case No. D2020-2398

1. The Parties

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

The Respondent is Sujon Kobir, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <iqosvapeae.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2020, 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 September 17, 2020.

The Center verified that the Complaint 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 September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 13, 2020. 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 is Philip Morris Products S.A. part of a group of companies affiliated with Philip Morris International Inc. (PMI), an international tobacco company. PMI sells a product branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HEATSTICKS” are inserted and heated to generate a nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained a18.3% share of the market in Japan. By today the IQOS System is available in key cities in around 57 markets across the world. As a result of a USD 6 billion investment and extensive international sales (in accordance with local laws), the IQOS System has achieved international success and reputation.

In relation to these products the Complainant owns a large portfolio of registered trademarks. Among them, but by no means limited to, are the following trademark registrations (referred as “Trademarks”):

- United States of America IQOS (word) No. 4763090 registered on June 30, 2015;
- United States of America (device) No. 4763088 registered on June 30, 2015;
- International Registration (device) No. 1338099 registered on November 22, 2016 designating Albania, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, China, Colombia, Algeria, Egypt, European Community, Georgia, Israel, India, Iceland, Japan, Republic of Korea, Kazakhstan, Morocco, Monaco, Montenegro, Mexico, Norway, New Zealand, Sultanate of Oman, Philippines, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America;
- International Registration HEETS (word) No. 1326410 registered on July 19, 2016 designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Curaçao, Egypt, USA, The former Yugoslav Republic of Macedonia, Russia, Philippines, Georgia, India, Iceland, Israel, Japan, Kenia, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, OAPI, Republic of Korea, Republic of Moldavia, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, Vietnam;
- United States of America HEETS (word) No. 5,860,364 registered on September 17, 2019; and
- United States of America Registration (device) No. 5238861 registered on June 30, 2015.

The Respondent is a private person Sujon Kobir from Bangladesh who registered the disputed domain name on August 9, 2020.

5. Parties’ Contentions

A. Complainant

By the Complaint, the Complainant contends that:

- it is the registered owner of the IQOS trademark in numerous jurisdictions, including, but not limited to the United States of America (“United States”);

- the disputed domain name is confusingly similar to the IQOS trademark registrations of the Complainant, as identically adopts the Complainant’s IQOS trademarks, in addition to the non-distinctive and descriptive word “vape” and non-distinctive letters “ae”;

- any Internet user when visiting a website provided under the disputed domain name <iqosvapeae.com> will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization on the website associated to disputed domain name;

- 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 (or a domain name which will be associated with this trademark);

- the Respondent is not making a legitimate non-commercial or fair use of the domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant;

- the Respondent is not an authorized distributor or reseller of the IQOS System and the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, first under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903;

- the website resolving to the disputed domain name includes no information regarding the identity of the provider of the website, which is only identified as “iqosvapeae”, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant;

- the illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its HEETS products and IQOS 3.0 and IQOS Multi devices and HEETS branded sticks given they have not yet been authorized for sale in the United States by the FDA and the online shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced its IQOS 3.0 and IQOS Multi devices into the United States market – which it has not;

- 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 System immediately after registering the disputed domain name;

- the term IQOS is purely an imaginative term and unique to the Complainant. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant;

- 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 registered 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;

- by reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the Website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents;

- the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 3.6 and the cases referenced therein).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the IQOS trademark acquired through use and registration.

The disputed domain name is confusingly similar to the IQOS trademark registrations of the Complainant, as it identically adopts the Complainant’s IQOS trademarks, in addition to the non-distinctive and descriptive word “vape” and non-distinctive letters “ae”.

Any Internet users when visiting a website provided under the disputed domain name <iqosvapeae.com> will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks. (see WIPO Overview 3.0, section 1.7) followed by the descriptive word “vape” and non-distinctive letters “ae”.

Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

The Panel therefore finds that the disputed domain names are confusingly similar to the trademark and the first element under of paragraph 4(a) of the Policy is therefore established.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1.

In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent is not making a legitimate non-commercial or fair use of the dispute domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant.

Moreover, the Respondent is not an authorized distributor or reseller of the IQOS System and the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, first under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As it is documented, the website resolving to the disputed domain name includes no information regarding the identity of the provider of the website, which is only identified as “iqosvapeae”, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant.

As noted, the contentions of the Complainant had not been rebutted by the Respondent, and the Panel agrees with the Complainant that the registration and use of a known trademark in a domain name cannot be considered as bona fide.

Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

The Complainant contends different circumstances which the Panel considers relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name.

Such circumstances refer to the following facts documented by the Complainant, as follows:

- the Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name;

- the term IQOS is purely an imaginative term and unique to the Complainant and cannot be a coincidence that the Respondent chose the disputed domain name, without the intention of invoking a misleading association with the Complainant;

- 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 registered 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;

- by reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents;

- the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith in the circumstances of this proceeding (see WIPO Overview 3.0, section 3.6 and the cases referenced therein).

Considering the contentions of the Complainant, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is therefore established.

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, <iqosvapeae.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: October 27, 2020

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